Jack Daniel’s won big in the “Bad Spaniels” toy dog ​​impersonation challenge.

OPINION ANALYSIS

The entrance to the Jack Daniel’s distillery in Lynchburg, Tenn. (Tarheel1776 via Shutterstock)

The decision on Thursday in Jack Daniel’s Properties v. VIP Products strongly denied the use of Jack Daniel’s trademarks by a manufacturer that sells a line of dog toys that mocks various beverage manufacturers. The one in question here copies many elements of the famous Jack Daniel’s bottle. In the words of Justice Elena Kagan:

• The toy is “about the same size and shape as an ordinary Jack Daniel’s bottle”;
• The “faux bottle” follows the original in using a “black label with illustrated white text and a white filigreed border”;
• The toy has the product name (Bad Spaniels) “in a similar font and arch” to the Jack Daniel’s bottles; and
• “Old No. 2 On Your Tennessee Carpet” replaces “Old No. 7 Tennessee Sour Mash Whiskey.”

All members of the court joined Kagan’s opinion that found the toy to be a reprehensible infringement of the Jack Daniel’s marks.

Kagan bases her analysis on two key points of trademark law, which are emphatically summarized at the beginning and reiterated at the end of her opinion. First, the main purpose of a trademark is to “identif[y] origin of a product (it is a Nike) and distinguish[h] from someone else (not another sneaker brand).” Second, the primary purpose of the cause of action for trademark infringement in the federal Lanham Act is confusion, specifically, confusion “as to the origin of a product or service.” She quips: “Confusion of origin is the bête noire of trademark law – the thing that directly conflicts with the law’s twin goals of facilitating consumer choice and protecting the goodwill of producers,” both of which depend on a reliable identification of the origin of the products.

The Jack Daniel’s bottle next to the VIP Products “Bad Spaniels” toy dog.

Kagan’s treatment of the dispute flows directly from that foundation. First, for him the most important characteristic of the Bad Spaniels toy is the purpose for which it uses the Jack Daniel’s marks, “as a designation of origin for [its] own goods.” Regardless of the protections parodies have in other contexts, Kagan argues that there is no special First Amendment defense when a copied mark is used in that way.

He spends several pages – more than a third of the entire opinion – discussing the 1989 decision Rogers against Grimaldi, in which the US Court of Appeals for the 2nd Circuit denied legendary movie star and dancer Ginger Rogers’ effort to block the use of the title “Ginger and Fred” by a film about two fictional Italian cabarets performers. The lower court thought so in this case Rogers the dog toy was given a free pass because of the “communicative” aspect of the toy. The Supreme Court has not directly embraced (or rejected) Rogers, but Kagan rejects the lower court’s treatment of it as completely inconsistent with the way other courts have understood it. In his view, many “lower courts upholding a First Amendment defense based on Rogers” has never been applied (except in this case) in cases “where a trademark is used … to designate the origin of a work.” Instead, “they pointed it to the … case[s] where a trademark is used to perform some other expressive function.”

He offers the memorable example of the song “Barbie Girl”, which Mattel (the owner of the Barbie trademarks) could not block because “Barbie Girl” did not suggest that the song belonged to Mattel: “[A] Consumers will no more think that the song was produced by Mattel” than they will think that Janis Joplin and Mercedes Benz “entered into a joint venture” when they hear “Janis Joplin croon ‘Oh Lord, won’t you buy me of Mercedes Benz?'” Summarizing his view, Kagan concluded that “whatever you do Rogers — and … we have no position on that … — it has always been a cabinet doctrine,” limited to products that use the mark in a “way that does not identify the source.”

Having set that limit on any defense based on Rogers or the First Amendment, Kagan reminds us that he drew that boundary from the doctrinal foundation he used to begin his opinion. Circling back to that foundation, he quotes a leading treatise’s description of the central function of trademarks: “to indicate the origin of goods, and to distinguish them from those made or sold by others. ” For readers who don’t recall the trademark “bête noire” from the opening opinion pages, he emphasizes that “[t]the primary offense under the law … is to undermine” the ability to reliably indicate the origin of goods, and reasons that “confusion is likely to arise when one person uses another’s trademark as a trademark … rather than for in some other expressive function.” For the justices, the lower court “erroneously believed that the First Amendment demanded” protection for such use. “When a mark is used as a mark,” the “free expression interest” gets all the protection it needs by requiring the trademark owner to prove likelihood of confusion.

The opinion closes with a brief rejection of a separate statutory ruling that protects the toy under a federal law that prevents the use of “diluted” trademarks like Jack Daniel’s. That law has an exception that protects competing users if their use of the mark is “non-commercial.” The lower court here considered the use as “noncommercial” because it “parodies” and “conveys[s] a funny message” about Jack Daniel’s. Kagan found that the reading of the law could not be affirmed, because the law’s protection for fair use is limited, implicitly, so it does not apply for use “as a designation of origin for one’s own goods or services of man.” Analyzing the main body of her opinion (concerning the Lanham Act), Kagan argued that Congress’s express statutory rejection of any use of the protection “as a designation of origin” meant that the use con- at issue here – within that category itself – cannot be protected from a suit by trademark holder Jack Daniel’s.

The Supreme Court does not often decide cases that focus on major issues of trademark law, so the spirited discussion of the importance of confusion here is likely to be considered frequently by lower courts and in detail by scholars. To the observer, perhaps the most noticeable thing about the opinion is the muscular tone. As with other major intellectual property cases in this term – Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith for copyrights and Amgen Inc. v. Sanofi for the patents come to mind – the Jack Daniels the court was more assertive than usual in this area in giving bold and unqualified basic principles as the basis for its decision. In recent years, justices have often written in such a skeptical and cautious tone that lower courts and scholars will be frustrated in trying to see any clear line of decision in the court’s reasoning. That’s not a problem in cases of the central intellectual property of this term.