Attorney Steve® Intellectual Property Essentials - Trademark Law - Parody vs. Tarnishment.  United States Supreme Court to Decide.

Introducution

As the majority of readers are aware, Jack Daniel's produces and sells whiskey. Jack Daniel's, which was established in 1866, has developed into a well-known global brand. Tennessee Sour Mash Whiskey and "Old No. 7" are written on the label of Jack Daniel's famous square brown bottle, along with the logo JACK DANIEL'S. For this trade dress, Jack Daniel's has a "incontestable" federal registration and runs a bustling trademark licensing program.

Dog chew toys are sold by the Arizona-based company VIP Products LLC. In July 2013, VIP unveiled their "Bad Spaniels" dog toy, which was fashioned to resemble a Jack Daniel's bottle and had white letters against a black background. "Bad Spaniels, the Old No. 2 on your Tennessee Carpet," "43% POO BY VOL," and "100% SMELLY" are written on it. VIP states that the product is "not linked with Jack Daniel's" on the package.

Following a cease and desist letter from Jack Daniel's, VIP filed a lawsuit in federal district court in Arizona asking for declaratory judgment ruling that the Bad Spaniels toy did not violate or tarnish Jack Daniel's trademark or trade dress rights.

VIP lost in their initial pleading but later appealed to the Court of Appeals.  This court found in their favor holding:

"C. First Amendment Defense “In general, claims of trademark infringement under the Lanham Act are governed by a likelihood-of-confusion test,” Twentieth Century Fox Television v. Empire Distribution, Inc., 875 F.3d 1192, 1196 (9th Cir. 2017), which seeks to strike the appropriate balance between the First Amendment and trademark rights, see Gordon v. Drape Creative, Inc., 909 F.3d 257, 264 (9th Cir. 2018). The likelihood-ofconfusion test requires that the plaintiff have “a valid, protectable trademark” and defendant's “use of the mark is likely to cause confusion.” S. Cal. Darts Ass'n v. Zaffina, 762 F.3d 921, 929 (9th Cir. 2014) (quoting Applied Info. Scis. Corp. v. eBAY, Inc., 511 F.3d 966, 969 (9th Cir. 2007)). When “artistic expression is at issue,” however, the general likelihood-of-confusion test “fails to account for the full weight of the public's interest in free expression.” Gordon, 909 F.3d at 264 (quoting Mattel, Inc. v. MCA Records, 296 F.3d 894, 900 (9th Cir. 2002)). Accordingly, we have held that the Lanham Act only applies to expressive works if the plaintiff establishes one of the two requirements in the test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). See MCA Records, 296 F.3d at 902 (adopting Rogers test for use of a trademark in the title of an expressive work); see also Gordon, 909 F.3d at 267 (noting that after MCA Records, this Court “extended the Rogers test beyond a title”). Rogers requires the plaintiff to show that the defendant's use of the mark is either:

(1) “not artistically relevant to the underlying work”

or

(2) “explicitly misleads consumers as to the source or content of the work.” Gordon, 909 F.3d at 265.

Because Bad Spaniels is an expressive work, the district court erred in finding trademark infringement without first requiring JDPI to satisfy at least one of the two Rogers prongs. See Gordon, 909 F.3d at 265

D. Trademark Dilution by Tarnishment When the use of a mark is “noncommercial,” there can be no dilution by tarnishment. 15 U.S.C. § 1125(c)(3)(C); see A.R.S. § 44-1448.01(C)(2).

Speech is noncommercial “if it does more than propose a commercial transaction,” Nissan Motor Co. v. Nissan Comput. Corp., 378 F.3d 1002, 1017 (9th Cir. 2004) (quoting MCA Records, 296 F.3d at 906), and contains some “protected expression,” MCA Records, 296 F.3d at 906. Thus, use of a mark may be “noncommercial” even if used to “sell” a product. See Nissan Motor Co., 378 F.3d at 1017; MCA Records, 296 F.3d at 906. Although VIP used JDPI's trade dress and bottle design to sell Bad Spaniels, they were also used to convey a humorous message. That message, as set forth in Part II.C above, is protected by the First Amendment. VIP therefore was entitled to judgment in its favor on the federal and state law dilution claims. See Nissan Motor Co., 378 F.3d at 1017; MCA Records, 296 F.3d at 906."Listen to Attorney Steve® Explain the Case

Listen to Attorney Steve® Explain the Case

Dilution of a famous mark

One of the claims is that the Spaniel toy is "diluting" on Jack Daniels famous brand.  The Trademark Dilution Revision Act of 2006 (TDRA) protects famous marks against “dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” 15 U.S.C. § 1125(c). Dilution by tarnishment is defined as “association arising from the similarity between a mark or a trade name and famous mark that harms the reputation of the famous mark.” 

The TDRA includes statutory exclusions that preclude dilution liability for certain uses of famous marks. The most important in this case are those that exclude from liability use of a mark for “identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner” and “noncommercial use of a mark.” Courts have generally applied TDRA's statutory exclusions from dilution liability, including the “noncommercial use” exclusion, in cases involving uses that qualify as an “expressive work” under the Rogers test.

Recognized exceptions to Trademark Dilution Claims

Here is a snippet pulled from the case that outlines the exceptions to claims of dilution:

Contact a California Trademark Lawyer

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