That Dog Don't Hunt: Insuring Your Trademarks Against Infringement

In June of this year, the Supreme Court ruled on a case between Jack Daniel’s and a chew toy company who made toys that mimicked Jack Daniel’s products (with a funny spin). Bad Spaniels’ “The Old No. 2 On Your Tennessee Carpet,” chew toy was the topic at hand.

Frequently, in cases like this, there would be no issue of infringement because the product in question would be considered a parody of the original. If something is a parody—like Bad Spaniels purported that their toys were—it would be deemed fair-use and avoid infringement. Parody is a form of commentary that is generally exempt from many of the policies surrounding trademark usage. In the interest of free speech, commentary, critique, parody, and some educational purposes all constitute fair-use. Trademark protection was never intended to prevent all mentions of brands or their products, and certainly was not intended to silence free speech—an aspect of the law that Bad Spaniels capitalized on.

The first ruling in this case came out in Jack Daniel’s favor, but upon appeal in the Ninth Circuit, the decision unanimously fell in Bad Spaniels’ favor. Jack Daniel’s argued that Bad Spaniels infringed on its trademarks, tarnished its marks’ reputation, and diluted them. Bad Spaniels argued that not only were its dog toys non-diluting and non-tarnishing, but that its toys were “expressive works” which granted them protection under the First Amendment and the Rogers test.

The Rogers test, as established in Rogers v Grimaldi , protects expressive works that include trademarks within them. The use of the marks must have “artistic relevance to the underlying work” and that they cannot “explicitly mislead as to the source or the content of the work.” This means that a book or movie that mentions a brand in a non-plot relevant and transitory manner has used the mark fairly, and that the brand mentioned has not been harmed or affected by the use. Traditionally, Rogers has been used instead of the typical likelihood of confusion test when it comes to things like parody, comment, or mere mention.

Under Rogers, the burden of proof to show that an expressive work has infringed on a trademark is high. The Ninth Circuit remanded the case, asking the lower court to rule on whether Jack Daniel’s could satisfy the high bar of the Rogers test. Upon remand, the district court found that Jack Daniels could not offer enough evidence to pass Rogers and granted summary judgement for Bad Spaniels. Jack Daniel’s then appealed to the Supreme Court.

On June 8 ^th , the Supreme Court ruled in favor of Jack Daniel’s, handing down a decision that impacts the Rogers test, as well as how parodies are regarded. The Court decided that the Rogers test had no merit—that it did not protect fair-use, expressive works— when “an alleged infringer uses a trademark in the way the Lanham Act more cares about: as a designation of source for the infringer’s own goods.” In this case, the Court put heavy emphasis on Bad Spaniel’s brand and its portfolio of similarly parodic toys: “Doggie Walker,” “Mountain Drool,” “Dos Perros,” “Canine Cola,” and “Smella Arpaw.” Since the company was using its parodies as brand identification and had even trademarked the words “Bad Spaniels” with trade dress for it, the Court found that the use reached beyond fair expression and into infringement.

The Court further added that regardless of whether Bad Spaniels’ toys were considered parody, “fair use exclusion has its own exclusion: It does not apply when the use is ‘as a designation of source for the person’s own goods or services,’” as was the case here. This affects the Rogers test, as the ruling now makes an exception in its protection for when the expressive use of a mark is as a mark.

The whittling away of the Rogers test is something that the Court seems to have gone to great lengths to be precise about. While the majority opinion stressed that this exception could only be used in this specific scenario, the decision to chip away at Rogers was unanimous, and through concurring opinions three justices remarked that the future of Rogers v Grimaldi was uncertain in their eyes.

As of now, Rogers— in this slightly modified form—still stands, and it looks as if like the Court has no intention of overturning it just yet. However, it seems that the Court may soon entertain more cases pertaining to the Rogers test and similar issues, likely to decide whether Rogers can (and/or should) continue to stand. Without Rogers (or a suitable replacement), the way companies “clear” the use of brands in media would mean that the typical likelihood of confusion test would be applied if a lawsuit were to arise—a test that is less clear cut, and with a lower bar.

Brand recognition is pivotal for a business’s success, as is the ability to stop others from diluting and infringing on your marks. In a world where Rogers is in jeopardy, previously non-infringing use may become infringing. Insuring your trademarks against infringement is something the experts here at IPISC have been doing for decades! If you’re interested in protecting your IP against future infringers or are interested in learning more about what we can offer, visit our website and connect with us at https://ipisc.com/solutions/.

IPISC intern.

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