Representatives from Jack Daniel’s Whiskey and the makers of a squeaky dog toy walk into the bar… of the Supreme Court, that is. No, it’s not the beginning of a joke, but a description of what will happen on March 22 when the nation’s highest court hears oral arguments in Jack Daniel’s Properties, Inc. v. VIP Products LLC.

The lawsuit, filed by the historic Tennessee whiskey distiller, alleges that a dog toy made by VIP Products violates Jack Daniel’s trademark. The toy in question, “Bad Spaniels,” is part of VIP’s “Silly Squeakers” line and mimics the look of a bottle of Old No. 7, Jack Daniel’s signature product. (“The Old No. 2 on your Tennessee carpet,” jokes the toy.)

Although the district court found that the product was likely to confuse customers and told VIP Products to stop selling the squeaker, the Ninth Circuit Court of Appeals disagreed, viewing VIP’s parodic product as “noncommercial speech,” to which First Amendment protections apply as an “expressive work,” even if it was “surely not the equivalent of the Mona Lisa.”

Rebecca Tushnet, the Frank Stanton Professor of the First Amendment at Harvard Law School, says the Ninth Circuit got the law right: “the product was a parody, and the parody was the point,” she says. In an email interview about the case with Harvard Law Today, Tushnet, who filed a friend-of-the-court brief on behalf of a group of intellectual property scholars, says she hopes the Supreme Court upholds “strong protections for noncommercial speech.”

If not, Tushnet warns, “expect a lot more blurred images and made-up names in supposedly realistic works of fiction” moving forward.

Harvard Law Today: What is the purpose of the Lanham Act, which undergirds trademark registration in the United States?

Rebecca Tushnet: The general purpose of the Lanham Act is to promote fair competition and protect both competitors and consumers against harmful confusion. The Lanham Act covers both trademarks and false advertising, though most of the time people focus on the trademark provisions.

HLT: The statute has a provision for trademark violation, where “the defendant’s use of the mark to identify goods or services causes a likelihood of confusion.” What is the ‘likelihood-of-confusion test,’ and how does it apply here?

Tushnet: There isn’t actually a single ‘likelihood of confusion test.’ The different circuits have somewhat different tests that they use in most cases, considering multiple factors such as the strength of the mark, the similarity of the plaintiff’s mark and the defendant’s mark, and the relatedness of the products. The multifactor test was designed to assess confusion when the defendant made different goods than the plaintiff, such as when the plaintiff made pancake mix and the defendant made pancake syrup. But, in some types of cases, courts use different tests, for example when the defendant is using the mark to compare its product to the trademark owner’s, or when the defendant is selling used goods initially made by the plaintiff. 

HLT: Why did the Ninth Circuit think that greater First Amendment protections should apply in this case? Can you expand on why it believed that VIP Products was engaging in “noncommercial speech”?

Tushnet: The court saw that VIP was making a joke: the product was a parody, and the parody was the point. In First Amendment terms, commercial speech is speech that proposes a commercial transaction — essentially, an ad. Where the speech itself is what’s for sale, that’s noncommercial even if it’s for profit, just like the speech of The New York Times or a movie studio’s speech.

HLT: What are VIP Products’ best arguments here?

Tushnet: First, the Ninth Circuit was right; this is a communicative product, not a can of peas where the label is distinguishable from the underlying product, and the First Amendment protects it strongly. Second, and relatedly, Jack Daniels argues that the parody was confusing, but one look at the parody product shows that it is definitely not a Jack Daniel’s bottle or even a Jack Daniel’s dog toy. Any consumer confusion results from consumers making a mistake of law — that parody requires permission of the parody victim, which it does not. That’s not the kind of confusion trademark law should recognize.

HLT: What about Jack Daniel’s? What is its best argument?

Tushnet: Jack Daniel’s claims there’s one confusion test that should always be used even with noncommercial speech, which is a pretty bad idea; it also points to its survey claiming 29% of consumers were confused about whether Jack Daniel’s was associated with the parody. In the alternative, Jack Daniel’s argues that First Amendment protection should only be given to speech in traditional formats like books and movies.

HLT: In Jack Daniel’s petition to the Supreme Court, it compares this situation to those in which THC-infused products use labels that look like food items you could find on the grocery store shelf. Do you think this comparison makes sense, or do you think the cases are different because the risk of harm to consumers is greater with marijuana products?

Tushnet: It’s not the risk of harm that’s different; it’s that marijuana products are not noncommercial speech.

HLT: Why do you think the Supreme Court took this case?

Tushnet: Trademark law is fun! This probably seemed like an interesting case, and, although Jack Daniels changed its argument pretty substantially in the merits brief, there was a colorable argument that the ways in which the different circuits evaluate a First Amendment defense differed somewhat, though I didn’t think there was a full-on split.

HLT: How will SCOTUS likely think through this case? What tests should it apply?

Tushnet: I strongly hope the Court will see through Jack Daniels’ argument that the text of the Lanham Act specifies a ‘likely confusion test’—it does not—and work with the logic of the Second, Ninth, Eleventh, and other circuits that have applied strong protections for noncommercial speech. In particular, confusion about what the law requires of parodists, and confusion that is immaterial to consumers and doesn’t affect their purchasing decisions, should not override the rights of noncommercial speakers.

HLT: What are the broader trademark implications of this case?

Tushnet: It really depends! The Court could just reaffirm the longstanding First Amendment-protective test, known as the rule of Rogers v. Grimaldi, and then things wouldn’t change a lot. If Jack Daniels wins, expect a lot more blurred images and made-up names in supposedly realistic works of fiction, video games, etc.

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