Trademark and the First Amendment
The United States Supreme Court has taken on the case Jack Daniel’s Properties, Inc. v. VIP Products LLC in which the Court will answer whether the humorous use of another’s trademark as one’s own commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis or instead receives heightened First Amendment protection.
The Court will also answer whether the humorous use of another’s mark as one’s own on a commercial product is “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the trademark dilution revisions act.
Trademark law protects consumers from confusion about the source of goods and services on the market. The standard for trademark infringement is whether the accused infringer’s use of a mark causes a “likelihood-of-confusion” in the marketplace. However, trademark parody may provide a defense to successfully overcome likelihood of confusion.
Parody is commonly associated with copyrights under statutory “fair use” doctrine. However, this parody defense can be also used as a statutory protection for trademark dilution or through common law unfair competition claims. To use this defense successfully it requires that the parodist’s use does not cause confusion and does not blur or tarnish the brand owner’s mark. In this case, Jack Daniel’s Properties, will have to provide proof that the parody is diluting the distinctiveness of its brand and it is impairing and harming its brand. This type of evidence may be hard to prove because it may be perceived by the public as a mere joke as noncompetitive dog toy.
However, and this is where the question the Court will have to answer is whether the speech a parody of someone’s trademark product, which may be considered free speech, overrides the brand owner’s trademark rights. When considering an individual’s right to freedom of speech to an expressive work the courts usually will apply the test from Rogers v. Grimaldi, which states, “To implement this vague and fluid test…First, titles which are artistically relevant to an underlying work but are “explicitly misleading” violate the Lanham Act. Second, titles which are artistically relevant but “ambiguous or only implicitly misleading” do not violate the Lanham Act.” Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). The Rogers test is typically used for traditionally expressive and artistic work, however, the courts have applied it to trademark parodies as well.
Jack Daniel’s Properties, Inc, wants the Court to declare that such parodies are trademark violations, which could limit what individuals and companies can. It will be interesting to see what the Court will decide around these parodies, the Rogers Test and dilution. Stay tuned this is going to be an interesting opinion from the Supremes.