US Supreme Court decision on dog toys warns against parody products

By Blake Brittain

(Reuters) – The U.S. Supreme Court on Thursday granted brand owners a victory over parody products when it ruled that “Bad Spaniels” dog toys resembling Jack Daniel’s whiskey bottles were not protected by the US Constitution from the liquor manufacturer’s trademark lawsuit.

The ruling will likely force companies to toe a more cautious line when making commercial products that imitate other brands for parody purposes, legal experts said.

VIP Products had argued that the First Amendment protected its toys’ poop-themed variations on Jack Daniel’s famous label and bottle design, which it described as a commentary on the “serious bombardment of consumers by the advertising” by liquor brands and the “joyful” dog owner. the humanization of their pets.”

But in a 9-0 decision, judges ruled that a precedent known as the Rogers test for assessing trademark use in artistic expression did not apply to VIP products, overturning a court of American appeal and raising the bar for parodies to survive trademark claims.

Rogers’ test is “not appropriate where the accused infringer has used a mark to designate the source of its own goods – in other words, has used a mark as a mark,” Judge Elena Kagan wrote.

Kagan compared the case with situations where she said Rogers’ application of the test was warranted, including when Danish pop group Aqua’s label MCA Records won a trademark lawsuit by Mattel over the group’s song. Barbie Girl.

“On the one hand, this is a win for artists,” said Megan Bannigan, partner at Debevoise & Plimpton. Bannigan said the ruling is “also a win for brands” because it clarifies that Rogers’ test does not apply when the mark is used as a typical mark to identify a source of goods without permission.

VIP had admitted to using “Bad Spaniels” as a trademark. But the High Court provided little guidance on where to draw the line between trademark use and non-trademark use that might be subject to Rogers’ test, Bannigan said.

Doug Masters, a Loeb & Loeb partner, said the ruling suggests parody products accused of infringement may not be able to rely on Rogers’ test if they are “designed to be a commercial product, even if there is an expression beyond the mere commercial part”. of this one.”

Masters said the ruling could force companies that want to engage in parodies to enter into licensing deals or find ways “to be more creative” and less similar to the brands they refer to.

Other experts said the ruling leaves room for the First Amendment to apply to parody products.

Alexandra Roberts, a law professor at Northeastern University, cited a “Chick-Fil-Hate” t-shirt as an example of a parody product that could still qualify for First Amendment protection because it conveys a message about Chick-fil-A and doesn’t. use “Chick-Fil-Hate” as a trademark.

The shirt references the Chick-fil-A fast food restaurant’s past donations to Christian groups opposed to same-sex marriage.

“If Chik-Fil-Hate was also inside the shirt on the tag, that would be more trademark use,” Roberts said.

Elizabeth Brannen, a partner at Stris & Maher, said Jack Daniel’s win “could prove pyrrhic”. The whiskey maker will still have to prove that VIP toys are likely to confuse potential customers into believing it was affiliated with them in order to win its infringement case.

“The likelihood of confusion analysis will always consider the fun message of the challenged product,” Brannen said. She noted that the High Court said consumers “are not so likely to think that the manufacturer of a simulated product is making fun of themselves”.

(Reporting by Blake Brittain in Washington)

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