Sarah KellerIP Seminar Rough Draft

3/25/2021

AbstractParody law should have different confusion analyses based on an

objective commercial-use framework because, as Jack Daniel’s Properties, Inc. (“JDPI”) in Jack Daniel's Properties Inc. v. VIP Products LLC1 argues, without differentiation a whole class of products and advertising is limited through a heightened First Amendment protection.2 This paper will focus on the issue presented by Jack Daniel’s in their motion for writ of certiorari to the Supreme Court of the United States. Specifically, "whether a commercial product using humor is subject to the same likelihood-of-confusion analysis applicable to other products, or whether such a product is entitled to heightened First Amendment protection that requires the brand owner to prove that the use is either not artistically relevant or explicitly misleads consumers.”3

This paper is composed of three parts, the first four parts grappling with the current complexities of parody law and the fourth offering a solution. First, I will provide background on Jack Daniel's Properties Inc. v. VIP Products LLC, focusing on the impact the case has had on parody law. In this section, I will also explore some questions that could have been answered and impacts the case could have had if the Supreme Court had granted certiorari. Second, I will discuss the current state of parody law, especially as this area of law involves the First Amendment. I also briefly highlight some additional unanswered questions and complexities still present in parody law in this section. Third, finally, I will present a solution to the confusion analysis issue through a new framework in which courts could utilize when addressing parody law. This framework will provide four different levels of confusion analysis, to be used on a case-by-case basis.

1 Jack Daniel's Properties Inc. v. VIP Products LLC, 953 F.3d 1170, 1175 (9th Cir. 2020), cert. denied, 20-365, 2021 WL 78111 (U.S. Jan. 11, 2021).2 Id.3 Josh Escovedo and Weintraub Tobin, Supreme Court Update: SCOTUS Denies Review Of Two Highly Watched IP Cases JD SUPRA (Jan. 22, 2021) https://www.jdsupra.com/legalnews/supreme-court-update-scotus-denies-1631733/ .

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Table of ContentsABSTRACT____________________________________________________________________________________1

A CASE STUDY: SUMMARY OF JACK DANIEL'S PROPERTIES INC. V. VIP PRODUCTS LLC_______________________3

1) BACKGROUND OF JACK DANIEL’S_______________________________________________________________32) LOWER COURT DECISION IN JACK DANIEL'S________________________________________________________43) JACK DANIEL'S IMPACT ON PARODY LAW__________________________________________________________54) UNANSWERED QUESTIONS FOLLOWING JACK DANIEL'S_________________________________________________7

STATUTORY BACKGROUND______________________________________________________________________7

1) PARODY LAW_____________________________________________________________________________7a) Infringement or Unfair Competition Claim__________________________________________________8b) Dilution Claim________________________________________________________________________8

2) EXAMPLES OF PARODY LAW__________________________________________________________________12a) Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC_______________________________________12b) [NorthFace/South Butt law suit]________________________________________________________12c) Grey v. Campbell Soup Co._____________________________________________________________12d) Dumb Starbucks_____________________________________________________________________13

PROPOSAL: CONFUSION ANALYSIS FRAMEWORK____________________________________________________13

1) FIRST LEVEL: WAS THE PRODUCT PRODUCED IN BAD FAITH?____________________________________________142) SECOND LEVEL: IS THE PRODUCT A COMMERCIAL PRODUCT OR A NON-COMMERCIAL PRODUCT?____________________143) THIRD LEVEL: WILL THIS UPSET THE TWIN PURPOSES OF TRADEMARK LAW. WILL THE PRODUCT CONSUMER CONFUSION? WILL THE PRODUCT CAUSE UNFAIR COMPETITION?___________________________________________________________154) FOURTH LEVEL: IS THE PRODUCT PROTECTED UNDER THE FIRST AMENDMENT?_______________________________15

CONCLUSION_________________________________________________________________________________16

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A Case Study: Summary of Jack Daniel's Properties Inc. v. VIP Products LLC

1) Background of Jack Daniel’s VIP Products LLC (“VIP”) sells Silly Squeaker dog toys, including Kennel Relax’n, Heinie Sniff’n, and Bad Spaniels.4 VIP was selling a dog toy called “Bad Spaniels Silly Squeaker” dog toy which emulated a bottle of Jack Daniel’s Old No. 7 Black Label Tennessee Whiskey. However, the dog toy changed from the original Jack Daniel’s bottle by being a plush toy, and incorporating “light-hearted, dog-related alterations” and “poop humor.”5

More specifically, the words “Jack Daniel’s” were replaced with “Bad Spaniels,” “Old No. 7” with “the Old No. 2, on your Tennessee Carpet,” and alcohol content descriptions with “43% POO BY VOL.” and “100% SMELLY.”6 “A tag affixed to the Bad Spaniels toy states that the “product is not affiliated with Jack Daniel Distillery.”7

In 2014, Jack Daniel’s Properties, Inc. (“JDPI”) “demand[ed] that VIP cease all further sales of the Bad Spaniels toy.”8 JDPI carefully licenses use of its trademarks and trade dress on non-whiskey products, including pet products. Cert. This wasn’t their first time being infringed.9VIP responded by filing an action, seeking a declaration that the Bad Spaniels toy “does not infringe or dilute any claimed trademark rights” of JDPI and that JDPI’s trade dress and bottle design were not entitled to trademark protection.10 VIP’s complaint also sought cancellation of the Patent and Trademark Office registration for JDPI’s bottle design. JDPI counterclaimed, alleging state and federal claims for infringement of JDPI’s trademarks and trade dress.11

This case presented a frequently asked question under the Lanham Act: under what circumstances humorous use of another’s trademark or trade dress to identify the origin of a commercial product constitutes trademark infringement or trademark dilution?12

4 https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2020-21/january-february/parody-chew-toys-first-amendment/ 5 Appellate Court and Cert6 [CITE Id.].7 [Id. at 5].8 9 http://static2.businessinsider.com/image/500d57fd6bb3f7705f000002/jack-daniels-cease-and-desist-order.jpg 10 11 12 Find cite.

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2) Lower Court Decision in Jack Daniel's The district court found in favor of JDPI on both the dilution by tarnishment claim and the infringement claim of JDPI’s trademarks and trade dress issues, and thus, VIP was not entitled to the defenses of nominative and First Amendment fair use.13 The district court also found that JDPI established at the bench trial all “the requisite elements for dilution by tarnishment: fame, similarity, and reputational harm.”13 The district court noted that the claim of parody should be disregarded where the parodist seeks to capitalize on a famous mark’s popularity for the parodist’s own commercial use.14 On cross-motions for summary judgment, the district court held that VIP was not entitled to the defense of fair use because the toy “is not an expressive work.”15 More specifically, the Bad Spaniels toy was not an “expressive work” because its use of the JDPI’s marks was “at least in part, to promote a somewhat non-expressive, commercial product.”16

In reaching its decision, the district court relied on Tommy Hilfiger Licensing Inc. v. Nature Labs LLC.17  In that case, the U.S. District Court for the Southern District of New York held that First Amendment protection did not apply to “Timmy Holedigger,” a dog perfume that allegedly parodied the Tommy Hilfiger trademark, because the mark was being used “at least in part to promote a somewhat non-expressive, commercial product” and “trademark law permissibly regulates misleading commercial speech.”  Id. at 415, 16. The Ninth Circuit reached this result by engrafting a two-part test on top of the standard Lanham Act analysis, requiring JDPI to show that VIP’s use of JDPI trademarks and trade dress either is “not artistically relevant to the underlying work” or “explicitly misleads consumers as to the source or content of the work.”

13  VIP Prods., LLC v. Jack Daniel’s Props., Inc., 953 F. 3d 1170 (9th Cir. 2020).14 https://www.jdsupra.com/legalnews/trademark-parody-and-freedom-of-speech-70581/ 15 VIP Prods., LLC v. Jack Daniel’s Props., Inc., No. CV-14-2057-PHX-SMM, 2016 WL 5408313, at *5 (D. Ariz. Sept. 27, 2016).16 VIP Prods., LLC v. Jack Daniel’s Props., Inc., No. CV-14-2057-PHX-SMM, 2016 WL 5408313, at *5–6 (D. Ariz. Sept. 27, 2016) (emphasis added) (denying summary judgment because the likelihood of confusion test is a fact-intensive analysis).17 Tommy Hilfiger Licensing Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410 (S.D.N.Y. 2002).

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3/25/2021The district court held that the test articulated in Rogers v. Grimaldi18 for balancing the interests between trademark law and the First Amendment did not apply in the case because the Rogers test applies to artistic expression such as movies, plays, books, and songs and “requires courts to construe trademark law only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.”19 The nominative fair use defense was rejected because VIP “did not use JDPI’s identical marks or trade dress in its Bad Spaniels toy.” The district court rejected JDPI’s First Amendment defense because the trade dress and bottle design were used “to promote a somewhat non-expressive, commercial product.”20

The First Amendment was not specifically addressed in the final district court decision; however, the court had held earlier in litigation that the First Amendment does not establish protection for the adaptation of the JDPI trademark and trade dress for the commercial selling of a noncompeting product, distinguishing the dog toy from the expressive works to which the Rogers test had been applied in the Ninth Circuit.21 The court permanently enjoined VIP “from sourcing, manufacturing, advertising, promoting, displaying, shipping, importing, offering for sale, selling or distributing the Bad Spaniels dog toy.”22

VIP appealed to the United States Court of Appeals for the Ninth Circuit on each of the holdings the district court found.23 The Ninth Circuit affirmed that a JDPI’s ‘bottle is non-generic, distinctive, and non-function, and therefore was entitled to trade dress protection.24 However, the Ninth Circuit reversed the district court’s holding that “because the Bad Spaniels dog toy is an expressive work entitled to First Amendment protection, we reverse the district court’s judgment on the dilution claim… .”25

3) Jack Daniel's Impact on Parody Law In March 2020, the Ninth Circuit Court of Appeals held in VIP Products LLC v. Jack Daniel’s Properties, Inc. reversed the district court’s holding and instead held that VIP’s dog toy was an expressive work entitled to First Amendment protection.26 The Ninth Circuit—diverging from the Second, Fourth, Fifth, Seventh, Eighth, and Tenth Circuits, and from the Trademark Trial and Appeal Board—reasoned that the standard likelihood-of-confusion test does not account for VIP’s purported First Amendment interest in making jokes.27

The court observed that it recently had “little difficulty” concluding that greeting cards containing trademarked phrases were expressive works entitled to First Amendment protection, even though they did not show great “creative artistry.”28 In Gordon v. Drape Creative, Inc.,

18 875 F.2d 994 (2d Cir. 1989)19 https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2020-21/january-february/parody-chew-toys-first-amendment/#ref2 20 APP 21 Find Cite22 Cite DC Case 23 CITE24 APP25 [Id. at 4] “But this is one of many cases where the harm to one’s brand identity is real and direct. Jack Daniel’s spirits products are consumed by adults. Jack Daniel’s has invested substantial resources into an image of sophistication.”26 APP27 28 Id. (quoting Gordon v. Drape Creative, Inc., 909 F.3d 257 (9th Cir. 2018)).

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3/25/2021which held that greeting cards are expressive works under Rogers because they evince an “intent to convey a particularized message.” The court noted that it “had ‘little difficulty’ concluding that greeting cards, which combined the trademarked phrases ‘Honey Badger Don’t Care’ and ‘Honey Badger Don’t Give a S - - -’ alongside announcements of events such as Halloween and a birthday, were ‘expressive works’ entitled to First Amendment protection.29 Like the greeting cards in Gordon, the VIP’s dog toy, “although surely not the equivalent of the Mona Lisa, is an expressive work.”30 The court concluded that VIP’s toy “communicate[d] a ‘humorous message,’” and remanded the case to the lower court for analysis under the Rogers two-step.31

This focus on messages and expression strays from the way in which the Rogers test has always been applied and “upset a balance between trademark law and free speech by dramatically and baselessly over-extending the Rogers test for evaluating trademark use in ‘artistic expression.’”32

Some argue that part of the Ninth Circuit’s error may be due to the way in which some courts began conflating Rogers’s “works of artistic expression” standard with the term “expressive works.”33 Claiming that the Ninth Circuit’s expansion of Rogers to purported parodies in the form of ordinary commercial products “threaten[ed] brand owners’ goodwill because it allows merchants who simply slap a pun or a joke on their product to claim that this ‘expression’ shields them from liability as long as they do not explicitly mislead the public.”34 Nevertheless, the Ninth Circuit’s application of Rogers has the potential to render any commercial product that contains humorous elements a “work of artistic expression,” unduly expanding First Amendment protection for allegedly infringing uses of protected marks and unsettling the balance between trademark protection and free speech. 35

Absent review, many fear that the holding in Jack Daniel’s will “encourage forum shopping by infringers like VIP”36 because the holding “undermine[d] the Lanham Act’s goals of protecting consumers from deception and protecting mark owners’ investments in goodwill.” “Until then, [various marks’ owners], especially those subject to jurisdiction in the Ninth Circuit, should be vigilant about protecting their brands, and should take care to avoid laying the foundation for a declaratory judgment action in the Ninth Circuit should they need to challenge confusing or tarnishing commercial products that try to shield their infringement or dilution in the garb of parody.”37

29 APP (quoting Gordon, 909 F.3d at 261– 63, 268). Further noting: Even if the cards did not show great “creative artistry,” they were protected under the First Amendment because the cards “convey[ed] a humorous message through the juxtaposition of an event of some significance—a birthday, Halloween, an election—with the honey badger’s aggressive assertion of apathy.” Id. at 268–6930 APP Pg 1031 https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2020-21/january-february/parody-chew-toys-first-amendment/#18 32 https://news.bloomberglaw.com/ip-law/jack-daniels-says-high-court-must-tell-ninth-circuit-bad-dog33 34 35 https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2020-21/january-february/parody-chew-toys-first-amendment/#18 36 CERT37 https://www.ipwatchdog.com/2020/04/03/bad-spaniels-make-bad-law/id=120353/

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3/25/20214) Unanswered Questions following Jack Daniel's

a) Since the Supreme Court of the United States denied JDPI’s writ of certiorari, the obvious questions left unanswered were the questions presented in the writ. The questions presented to Supreme Court by JDPI on writ of certiorari include the following:

i. Whether a commercial product using humor is subject to the same likelihood-of-confusion analysis applicable to other products under the Lanham Act, or must receive heightened First Amendment protection from trademark-infringement claims, where the brand owner must prove that the defendant’s use of the mark either is “not artistically relevant” or “explicitly misleads consumers.”

ii. Whether a commercial product’s use of humor renders the product “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Lanham Act.38

b) The Ninth Circuit, however, sidestepped the district court’s holding under section 1125(c)(3)(A) and held that VIP’s poop humor— which, by design, injures JDPI’s brand identity— rendered its use of JDPI’s trademarks “noncommercial” and thus immune from dilution liability under a separate exclusion.39 VIP’s humor was directed precisely to those elements that JDPI sought to enforce.40 how do you make sure you are protecting your legal rights, without making everyone think you don’t have a sense of humor?41

c) The Rogers test, though, has only been applied to expressive works such as books, songs, video games, and movies; it has never been applied to consumer products like the dog toys here, even if those products were intended as parodies.42 The Supreme Court didn’t address whether or not an “new” Rogers test needs to be created by denying certiorari. Will a new form of the Rogers test be invented? It appears that reform in this area of trademark law is highly likely.43

Statutory Background1) Parody Law

“Some parodies may be confusing and others may not, but “the cry of ‘parody!’ does not magically fend off otherwise legitimate claims of trademark infringement or dilution.”24 Trademarks can be works of art (meaning they can be copyrighted) as well as a way of letting consumers know the source of goods (the definition of a trademark).44 If a mark’s owner does not protect their mark, they can lose it in the process called abandonment. Paradoxically, if a mark owner annoys everyone by protecting their mark too aggressively, they may make the mark worthless. A competitor’s advertisement that uses alterations to mock and belittle a brand’s

38 CERT39 [CITE] see id. § 1125(c)(3)(C). 40 Id. at 1401 (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578, 580 (1994)).41 https://legaltoenglish.org/dumb-starbucks-trademark-copycats/ 42 https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2020-21/january-february/parody-chew-toys-first-amendment/ 43 “Walden said it’s possible the Supreme Court could fundamentally alter the standard, which it has never addressed. But she said the high court more likely would clarify boundaries and rein in its reach. Most in the field see a place for the test, but think “it shouldn’t eviscerate the role” of trademark law, she said.” [CITE]44

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3/25/2021mascot, even if amusing, crosses the line.45 A parodist’s use must trigger liability under trademark laws prohibiting infringement or dilution or through common law unfair competition claims in order for a mark owner to protect their mark. 46

There is not an automatic “parody defense” to an infringement claim.47 The ideal parody would have the humor or criticism element recognizable and obvious. In many cases, humorous use of trademarks is not actionable under the Lanham Act because the use is so obviously parody that consumers would not be confused.48 If the parody is recognized and obvious, then there shouldn’t be any concern that the mark is infringing on another, right? Not the case. If the mark owner is more readily able to prove that confusion is likely, then they could bring a claim for trademark infringement or trademark dilution – the claims that JDPI brought against VIP.

a) Infringement or Unfair Competition Claim “An infringement or unfair competition claim requires proof that the parodist’s use is likely to cause confusion.”49 For a trademark infringement claim. courts apply the traditional likelihood-of-confusion test50 under Section 43(a)(1) of the Lanham Act.51 This test “asks whether the use of the trademark or trade dress is likely to confuse consumers regarding the product’s origin or sponsorship.”52 See also Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150F.3d 1042, 1046–47 (9th Cir. 1998) (“To state an infringement claim . . . a plaintiff must meet three basic elements: (1) distinctiveness, (2) nonfunctionality, and (3) likelihood of confusion.”). The likelihood-of- confusion test requires that the plaintiff have “a valid, protectable trademark” and defendant’s “use of the mark is likely to cause confusion.”53

b) Dilution Claim“[A] dilution claim requires proof that the parodist’s use is likely to blur or tarnish the brand owner’s famous mark.”54 On the issue of trademark dilution, until the [Ninth District Decision], no court had held that humorous use of a trademark insulates an infringer from liability for

45 CITE (5)46 https://www.jdsupra.com/legalnews/trademark-parody-and-freedom-of-speech-70581/ [CITE LA]47 https://www.jdsupra.com/legalnews/trademark-parody-and-freedom-of-speech-70581/ 48 CERT49 https://www.jdsupra.com/legalnews/trademark-parody-and-freedom-of-speech-70581/ [CITE LA]50 Twentieth Century Fox Television v. Empire Distribution, Inc., 875 F.3d 1192, 1196 (9th Cir. 2017).51 Section 43(a)(1) of the Lanham Act, 15 U.S.C. § 1125(a)(1), provides:

“Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsor- ship, or approval of his or her goods, services, or commercial activities by another person, or(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

52 CERT53 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)).54 https://www.jdsupra.com/legalnews/trademark-parody-and-freedom-of-speech-70581/ [CITE LA]

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3/25/2021trademark dilution.55 “[A]s the Second and Fourth Circuits and Trademark Trial and Appeal Board have recognized, the Lanham Act excludes parody from dilution liability, but only if the challenged use is “other than as a designation of source for the person’s own goods or services.’”56

i) Fair Use in Trademark LawIn contrast to infringement claims, there is a “parody” defense under the “fair use” exclusion to federal dilution claims for at least some parodies.57 The Trademark Dilution Revision Act (TDRA) excludes from its coverage both parodies involving “fair use” of a famous mark “other than as a designation of source” for the parodist’s own goods or services and “any noncommercial use of a mark.”58 The “fair use” defense does not apply when the parodist uses the parody as its own trademark. It also does not apply where mark was “not identical to the plaintiff’s” mark.59 Still, the mark’s owner must prove that the parody is likely to dilute the distinctiveness of the brand owner’s mark either by blurring or by tarnishment, with proof that the association of the parody with the brand is likely to impair or harm the brand. 60

ii) Roger’s TestTo balance First Amendment rights with the protection of consumers and mark owners, most courts follow the Second Circuit’s two-step Rogers test.61 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.”62 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

55 FIND CITE56 CITE 15 U.S.C. § 1125(c)(3)(A)(ii).57 https://www.jdsupra.com/legalnews/trademark-parody-and-freedom-of-speech-70581/ [CITE LA]58 15 U.S.C. § 1125(c)(3). Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), provides in relevant part:

(1) INJUNCTIVE RELIEF. Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired disinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause 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.(2) DEFINITIONS. ***

(C) For purposes of paragraph (1), “dilution by tarnishment” is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.

(3) EXCLUSIONS. The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:

(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with—

(i) advertising or promotion that permits consumers to compare goods or services; or(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

(B) All forms of news reporting and news commentary.(C) Any noncommercial use of a mark.

59 CERT60 CITE61 https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2020-21/january-february/parody-chew-toys-first-amendment/#ref8 62 Gordon, 909 F.3d at 264 (quoting Mattel, Inc. v. MCA Records, 296 F.3d 894, 900 (9th Cir. 2002)).

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3/25/2021forth in Rogers v. Grimaldi.63 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.”64

Under the Rodger’s test, a trademark infringement plaintiff must show that the defendant’s use of the mark either (1) is “not artistically relevant to the underlying work” or (2) “explicitly misleads consumers as to the source or content of the work.”65  The Rogers test has typically applied to marks in works of artistic expression,13 such as movies, songs,14 video games,15 and greeting cards.16 If the defendant has used the mark in such an artistic work, the court will apply Rogers instead of the likelihood of confusion factors. If the mark has been used on an ordinary commercial product like a pair of shoes, the likelihood of confusion test already strikes the proper balance.66

The application of the Rogers two-step depends not on the constitutional nature of the defendant’s speech but on the artistic nature of the work in which the defendant used the mark. Applying Rogers as the appellate court in Jack Daniel’s did implies “the defendant’s use of the mark may arguably contain some level of expression misses the point.”67

iii) First Amendment Protection of Parody Law The First Amendment rests on the idea that “government has no power to restrict expression because of its message, its ideas, its subject matter, or its content.”68 Its bar on laws abridging the freedom of speech is not absolute, however, and the regulation of trademarks has long been recognized as a permissible limitation on speech.69 In addition to the potential difficulties with proving the elements of the underlying claims, free speech considerations may come into play and override the brand owner’s trademark rights. 70 The First Amendment to the U.S. Constitution provides that “Congress shall make no law … abridging the freedom of speech.”71 “Parody” has been recognized as a form of artistic expression, and, where artistic expression is involved, “the public interest in avoiding consumer confusion must be balanced against the public interest in free speech.”7 Thus, the First Amendment right to freedom of speech can conflict with the consumer and brand owner protection goals of trademark laws. When an “expressive” work protected by the First Amendment is involved, courts apply the Rogers test, as noted above, the mark’s owner must show that 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.72

63 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”).64 Gordon, 909 F.3d at 265.65 Gordon, 909 F.3d at 265. See also Rogers, 875 F.2d at 117466 FIND CITE67 https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2020-21/january-february/parody-chew-toys-first-amendment/#ref11 68 Brown v. Entm’t Merchants Ass’n, 564 U.S. 786, 790–91 (2011).69 https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2020-21/january-february/parody-chew-toys-first-amendment/#ref8 70 https://www.jdsupra.com/legalnews/trademark-parody-and-freedom-of-speech-70581/71 U.S. Const. amend. I.72 https://www.jdsupra.com/legalnews/trademark-parody-and-freedom-of-speech-70581/

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3/25/2021The Second Circuit recognized that, although the risk of consumer confusion in the marketplace justifies some regulation, “works of artistic expression” are entitled to more First Amendment protection than ordinary commercial products.73 In determining whether a work is expressive, courts will analyze whether the work is “communicating ideas or expressing points of view.”74

In August 2019, the District Court for the District of Colorado articulated a new version of the Rogers test in Stouffer v. National Geographic Partners, LLC75 that focuses on the “artistic” nature of the defendant’s use and the defendant’s subjective motives.76 The court acknowledged that the Tenth Circuit Court of Appeals had neither adopted nor rejected Rogers, and decided that the Rogers test needed to be adapted because “it seems intuitively incorrect that the junior user may always lawfully use the senior user’s mark where there is minimal artistic relevance, objectively speaking, and a lack of any overtly misleading claim about source, sponsorship, etc.”77 The Tenth District applied Rogers test as “needlessly rigid,” though no circuit had done so.78

(1)Pros for First Amendment Protection[maybe delete section and following “cons” section]

“Trademark law and free speech often create tension. The Supreme Court recently addressed that tension by invalidating laws barring registration of vulgar and disparaging trademarks.”79

(2)Cons for First Amendment ProtectionThe district court found that VIP’s use of JDPI’s trademarks and trade dress as marks and trade dress for its own goods was likely to confuse consumers and injure JDPI’s reputation. Following a four-day bench trial, the district court credited evidence showing that 29% of consumers believed that JDPI actually sponsored the Bad Spaniels dog toy.80

The Ninth District found that VIP and JDPI sold related products, that consumers are unlikely to exercise caution when buying dog toys, and that VIP intentionally used JDPI’s trademark and trade dress to capitalize on JDPI’s popularity.81 Would we want First Amendment protection to interfere with the purposes of trademark law in such contrast?

73 Rogers, 875 F.2d at 997–98.74 MCA Records, 296 F.3d at 900 (quoting L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 29 (1st Cir. 1987)). A work need not be the “expressive equal of Anna Karenina or Citizen Kane” to satisfy this requirement, Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1241 (9th Cir. 2013), and is not rendered non-expressive simply because it is sold commercially, see MCA Records, 296 F.3d at 906–07. 75 Stouffer v. Nat’l Geographic Partners, LLC, No. 20-1208 (10th Cir. filed June 8, 2020).76 https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2020-21/january-february/parody-chew-toys-first-amendment/#1877 https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2020-21/january-february/parody-chew-toys-first-amendment/#ref32 (quoting 400 F. Supp. 3d 1161, 1172–73 (D. Colo. 2019).at 1179,78 https://news.bloomberglaw.com/ip-law/jack-daniels-says-high-court-must-tell-ninth-circuit-bad-dog79 80 CERT81 APP

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3/25/20212) Examples of Parody Law

a) Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLCIn Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC,82 the Fourth Circuit concluded that a dog toy parodying Louis Vuitton Malletier (“LVM”) was a successful parody and that confusion was unlikely.83 The dog toy “loosely resemble[d]” small Louis Vuitton handbags shaped roughly like a handbag; its name ‘Chewy Vuiton’ sounds like and rhymes with LOUIS VUITTON; its monogram CV mimics LVM’s LV mark; the repetitious design clearly imitates the design on the LVM handbag; and the coloring is similar,” “no one can doubt . . . that the ‘Chewy Vuiton’ dog toy is not the ‘idealized image’ of the mark created by LVM.” Id. at 260. The court held that the dog toys were “successful parodies of LVM handbags and the LVM marks and trade dress” and therefore did not infringe the LVM trademark.84 The Ninth Circuit in Jack Daniel’s “cited Haute Diggity Dog in support of its decision, and noted that it was decided on likelihood of confusion rather than the First Amendment grounds because the Fourth Circuit did not adopt the Rogers test.”85

b) [NorthFace/South Butt law suit]In contrast, the Missouri court found that consumers were likely to be confused by the Buttwiper toy that ragged on Budweiser beer because Budweiser sold its own pet products, like leashes and collars, and had presented evidence of actual consumer confusion.86 That case lead to litigation and a settlement, ultimately leading to the dissolution of the South Butt company.  NorthFace was clearly in the right by attempting to protect their brand. It was a very expensive ordeal that created mixed opinions by the public over how NorthFace handled the situation.87

c) Grey v. Campbell Soup Co.To support this proposition, the court cited Grey v. Campbell Soup Co., 650 F. Supp. 1166, 1175 (C.D. Cal. 1986), where DOGIVA dog biscuits were enjoined based on likely confusion and/or dilution with GODIVA chocolates. In the Grey case, the parodist’s testimony regarding development of the parody products and permission allegedly received from a former GODIVA business person was found to be “internally inconsistent and … contradicted in significant part by the testimony of others and documentary evidence.” In other words, the court found that the parodist was a liar and that finding permeates the opinion and likely influenced the outcome.

82 See, e.g., Louis Vuitton Malletier S.A.v. Haute Diggity Dog, LLC, 507 F.3d 252, 252 (4th Cir. 2007). But see Anheuser-Busch, Inc. v. VIP Prods., LLC, 666 F. Supp. 2d 974 (E.D. Mo. 2008), where a dog chew toy offered by VIP Products using BUDWEISER trade dress and the BUTTWIPER name was enjoined. For images from these and other parody cases, as well as a check list of pertinent factual considerations, see the author’s article, “Free Ride or Free Speech? Predicting Results and Providing Advice for Trademark Disputes Involving Parody,” 109 The Trademark Reporter 691 (July-Aug. 2019).83 https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2020-21/january-february/parody-chew-toys-first-amendment/#1884 Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, Id. at 258, 260, 263.85 Fourth Circuit adopted the Rodgers Test eight years later in Radiance Found., Inc. v. NAACP, 786 F.3d 316 (4th Cir. 2015).86 https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2020-21/january-february/parody-chew-toys-first-amendment/#1887 https://legaltoenglish.org/dumb-starbucks-trademark-copycats/

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3/25/2021d) Dumb Starbucks

I don’t know if you heard about it, but last week a store opened in LA called “Dumb Starbucks”. Turns out, it was a stunt by Nathan Fielder, a comedian with a show on Comedy Central. Nathan Fielder’s show is all about giving terrible advice to small businesses. This stunt was an attempt to play with the parody fair use exceptions of intellectual property law. Starbucks did not make much of a stir about this trademark infringement. And that, I believe, is what is important to discuss for us today.88

In fact, Dumb Starbucks attempted to use the art argument in their FAQs handed out to customers. Dumb Starbucks claimed to be an art gallery. Claiming the coffee was the art. That, they argued, is why they did not need to bother with the health code (which was ultimately what shut them down). This of course, was a focus on the copyright side of the image used by Starbucks as a Trademark. 89

Proposal: Confusion Analysis FrameworkThe goal of the Confusion Analysis Framework is to reconcile how and when to apply First Amendment rights to trademark law and answer some of the unanswered questions from Jack Daniel’s. Following the trend that the Tenth Circuit started, I want to propose a new rendition of the Roger’s Test when addressing the First Amendment rights within trademark law. However, my proposed framework intends to make the analysis more objective instead of subjective. The Confusion Analysis Framework functions as a “filter-test” to approach the notorious dichotomy. When working through the Confusion Analysis Framework, courts must consider the first level before the second level, the second before the third, and so on. The diagram below is provided as a helpful illustration.

88 https://legaltoenglish.org/dumb-starbucks-trademark-copycats/ 89 https://legaltoenglish.org/dumb-starbucks-trademark-copycats/

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3/25/2021

1) First Level: Was the product produced in bad faith? If the product was created in bad faith, then the product is automatically is enjoined from further use. However, bad faith is interpret in different ways. In this context, bad faith means an intentional and exclusive intent to harm the existing product’s goodwill, brand, owners, market share, revenues, etc. If there is not bad faith or if it is not clear bad faith was involved, the product proceeds to the second level of the framework.

2) Second Level: Is the product a commercial product or a non-commercial product?

This is the first part of the framework that seeks to rectify the contention involved in parody law. There are artistic works that are clearly not commercial, such as a one-of-a-kind painting. Further, there are commercial products that are clearly commercial, such as toilet paper. Unfortunately, there is a wide array of products that fall somewhere in between.

For the products in question that fall somewhere in between commercial and non-commercial products, I offer a definition of each in effort to offer some clarity. The Cambridge Dictionary defines commercial product as “a product that can make money.”90 While that will guarantee the inclusion of all potential commercial products, it is too broad and will encompass non-commercial products, as well.

For commercial product, I offer a definition that is commonly used in the definitions section of a form contract. Thus, a commercial product “is a product in regular production that is sold in substantial quantities to the general public and/or industry at established catalog or market prices with the goal of earning profits.91

90 https://dictionary.cambridge.org/us/dictionary/english/commercial-product 91 [CITE]

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Was the product produced in bad faith?

Is the product a commercial product or a non-commercial product?

Will the product upset the twin purposes of trademark law?Is the

product protected under the First Amendment?

Fourth Level

Third Level

Second Level

First Level

Sarah KellerIP Seminar Rough Draft

3/25/2021A non-commercial product is a good or service not primarily intended for or directed towards a commercial advantage, being engaged in commerce, or creating monetary compensation.92 Non-commercial products include products that are: one-of-a-kind products, not sold in a market, not mass-produced or made-to-order, and traded without a profit motive. Further, the original product that is then mass-produced is a non-commercial good. However, each production after the first is considered a commercial good.

Artistic creations are important to highlight. While creativity is involved in “the defendant had genuine artistic motives,”93  it can also be involved in the creation of a commercial good.94 Therefore, I do not think artistic creations should be the significant differentiating factor in determining whether First Amendment protection applies because anything can arguably be consider “art.” And lawyers would be eager to argue something is art, especially if it means advancing their client’s interests. Art in and of itself is subjective to the viewer. Trademark law already has the subjective elements to define whether a mark is confusingly similar to another mark, the law does not need an additional subjective test. To create a parody of a work of art is a copyright issue. To parody a brand for business purposes is a trademark issue. The problem with all of this is that trademark law is different than copyright law.95 Therefore, copyright law should sometimes be considered the better avenue for the creative expressions that are fixed and original.

If the product is considered non-commercial according to the definition provided above, then the analysis would not proceed to the next level. However, if the product is considered a commercial product, then the product did not get filtered out and the analysis proceeds to the third level. If there is any potential that the product could be considered a commercial product, then the analysis should move to the third level, as well.

3) Third Level: Will this upset the twin purposes of trademark law. Will the product consumer confusion? Will the product cause unfair competition?

If the question to either of these are yes, then the infringed trademark’s owner would be able to pursue relief through trademark law, such as trademark infringement or dilution. However, if the answer to the above questions are no, then the product did not get filtered out and the analysis proceeds to the fourth level. If the answer to the above questions are not a clear and convincing yes, then the product should move to the fourth level, as well.

4) Fourth Level: Is the product protected under the First Amendment?

As mentioned earlier in this article, a trademark would be considered to within First Amendment protection if it is an artistic expression. However, as the holding in Jack Daniel’s, the definition of artistic expression is broad and subjective. For example, because a court thinks a product is funny, then there is a potential“ First Amendment interest in confusing consumers into believing

92 In accordance with the definition of “noncommercial” from Merriam-Webster Dictionary. https://www.merriam-webster.com/dictionary/noncommercial 93 Stouffer v. Nat’l Geographic Partners, LLC, No. 20-1208 (10th Cir. filed June 8, 2020).94 APP95 https://legaltoenglish.org/dumb-starbucks-trademark-copycats/

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3/25/2021that [the product’s] sponsors [could sponsor a product like] a dog toy spotlighting poop.96 However, whether the Tenth District’s limited yet subjective version of the Rogers test or the Jack Daniel’s test prevails, this framework limits it significantly on the front end so that the proper products are undergoing a First Amendment analysis.

If the answer to the above question is yes, then the trademark in question is protected by the First Amendment and can continue its fair use. If the answer to the above question is no, then the infringed trademark’s owner would be able to pursue relief through trademark law, such as trademark infringement or dilution.

Conclusion[TBD]

96 CITE

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