Trademark owners may howl at the artistic and humorous use of their marks by someone else, but that use might be protected as fair use. Trademark owners’ ears perked up at an appeals court holding last year that parody is a humorous expression deserving of the same First Amendment protection as news and educational content. The Supreme Court, however, has now clarified that while a defense of parody may be considered, courts must still conduct a traditional likelihood of confusion analysis to assess trademark infringement.
This case arose when Jack Daniels, famous for Tennessee whiskey, made a stink because its marks were being used on poop-themed dog toys. The manufacturer of the dog toys even claimed that the parody mark, Bad Spaniels, was its own trademark. On appeal, after an initial win by Jack Daniels in the trial court, the appeals court ruled in favor of the dog toy manufacturer. It applied the so-called Rogers test, a two-pronged test designed to protect free speech, which allows artists to use another’s trademark when such use has artistic relevance and customers are not deceived about the source of such usage. Jack Daniels appealed, arguing that such a decision may harm its reputation as well as create a newer, almost absolute defense for trademark infringers.
In a unanimous opinion overruling the appeals court’s holding, the Supreme Court held that conveying a parody or humorous message does not inevitably create noncommercial use exempting infringers from liability, particularly when the infringer claims trademark rights in the marks it parodied, as was the case here. Writing for the Court, Justice Kagan noted that few cases would even get to the long-established consumer confusion inquiry if all expressive content such as humor triggered the Rogers filter, defeating long-established trademark principles.
The implications of this decision go beyond squeaky dog toys. While parody may be considered as part of the likelihood analysis, trademark owners, especially in the fashion, entertainment, and consumer goods industries, can rest easier now that the Supreme Court has maintained the status quo of the tried and true infringement analysis under the likelihood of confusion factors. Infringers can no longer hide behind the guise of parody as fair use. Conversely, those who want to make fun of the marks of others need to first sniff out the risks.
The case is Jack Daniel’s Properties, Inc. v. VIP Products LLC, Case No. No. 22–148.
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