What Does It Mean to “Use a Trademark as a Trademark”?
The Supreme Court issued a rare unanimous opinion in Jack Daniel’s v. VIP Products in early June, seeking to clarify the standard for the artistic, parodic, and generally “expressive” use of trademarks. The decision came down as part of a long court battle between the giant whiskey producer and VIP, a dog toy maker, over a rubber toy that parodies Jack Daniel’s iconic bottle shape and label. You can see the comparison below, but there are some scatological highlights: While the original whiskey bottle has its classic “Old No. 7” and “Tennessee Sour Mash Whiskey” descriptors, the “Bad Spaniels” dog toy instead reads “The Old No. 2 on your Tennessee Carpet.” And where consumers would typically find the factoid showing its 40% alcohol by volume, the toy bottle boasts “43% poo” and “100% smelly.” Jack Daniel’s, apparently unhappy with its branding being associated with a poop joke, decided that the best way to make sure the public did not link feces with its product was to sue VIP for trademark infringement and dilution and to appeal its case all the way up to the Supreme Court of the United States.
The bottle and the dog toy next to one another. Source: SCOTUS Blog.
On June 8, 2023, Justice Kagan’s opinion was published. In typical Kagan fashion, the opinion gave a thorough and clear overview of the relevant trademark law that helped answer the primary question of whether the parody use of the trademark here might get special First Amendment free speech protection. Ultimately, the answer was that it is not appropriate for the toy to get that special protection, and the comprehensive reasoning for that “no” can be boiled down to a single line:
“We hold only that it is not appropriate when the accused infringer has used a trademark to designate the source of its own goods—in other words, has used a trademark as a trademark. ”
So, case closed, no explanation needed. You get it right? Don’t use someone else’s trademark as a trademark, and you’re probably covered. We all know what that means…
Well, in case you are looking for some more explanation (like I was), let me use one of Justice Kagan’s examples to explain the “trademark as a trademark” rule in the least esoteric way possible.
In The Hangover: Part II, starring Zach Galifianakis, Ed Helms, and Bradley Cooper (among other important figures that Justice Kagan and her clerks have pondered in writing this decision), there is a scene in which Alan (Galifianakis) scolds Stu (Helms) for roughly handling a handbag with recognizable Louis Vuitton (LV) branding - except when Alan says “Careful, that is a Louis Vuitton,” he doesn’t use the flowy, french-sounding pronunciation. Rather, it was more phonetically literal, like “Careful, that is a Lewis Viton!”
Now when you watch this scene, do you think that the filmmakers are trying to use the LV branding to identify themselves as the source of the movie? Probably not. Instead, the use of the LV trademark here is to express a message in the movie. Alan’s mispronunciation paints a picture of who his character is, that is, someone who cares about a designer bag but doesn’t know how to pronounce its name. As it is featured here, the LV trademark is not being used to tell the audience where the movie came from.
This is where VIP made a mistake with Bad Spaniels. Although VIP made humorous use of the trademark, as did the Hangover writers, VIP went as far as to use the trademark in the same way that Jack Daniel’s uses it: to tell consumers that it is responsible for the product. Of course, it was supposed to be funny, but it also distinguished their dog toy from other dog toys and led dog toy purchasers to understand that VIP = the Bad Spaniels maker. This means that VIP got to benefit from a mark that was popular only because of the iconic ones Jack Daniel’s maintains. This goes against the heart of trademark protections, and it led to VIP’s ultimate loss at the highest court.
Trademark owners can see this decision as a clarification of their rights, a fortification of the idea that when your hard work makes your branding recognizable, only you get to trade on that good will. But this is also good for creatives who want to parody famous trademarks because the opinion draws a more explicit line between the “dos” and “don’ts,” and it doesn’t actually create new limitations on free speech rights.
As always, if you have an issue with your trademarks or other intellectual property that you’re unsure about, consult with an experienced attorney and find out more about your options.
