Jack Daniels vs Bad Spaniels: Funny Jokes and Free Speech

It is hard for me to believe that the US Supreme Court is hearing the case of Jack Daniels vs Bad Spaniels. For those who don’t know, Jack Daniels is a form of Whiskey.  VIP Products makes and sells a squeaking dog toy known as “bad spaniels.” The setup here is a humorous parody, but JD is not laughing.

Jack Daniels sent a cease-and-desist letter to VIP who then filed a declaratory judgment action in Arizona. The district court sided with JD on both TM infringement and dilution and issued an injunction to stop ongoing sales and distribution.  (The excrementory references in Bad Spaniel also led to tarnishment conclusions).  On appeal though, the 9th Circuit identified the toy as an “expressive work” entitled to speech protections under the First Amendment of the US Constitution and ordered the lower court to apply an enhanced infringement analysis stemming from Rogers v. Grimaldi, 875 F.2d 994 (1989).  Under Rogers, the court needs to consider the expressive relevance of the accused work and whether it is “explicitly” misleading.  With regard to dilution, the appellate court found that the dog toy was not actually making commercial use of the JD mark.  Although the toy was being sold in commerce, the JD mimicry was for humourous speech purposes rather than simply commercial.

The Supreme Court granted certiorari and the briefing is ongoing.  Typically, the most important amicus brief in a private case is that filed by the U.S. Government.  Here, the USPTO and DOJ joined together to file a brief strongly supporting the mark holder — writing that the 9th Circuit decision “is egregiously wrong.” The Gov’t is particularly concerned that a funny joke will be an excuse to allow infringement.  Although humorous parody should be a factor in the likelihood-of-confusion analysis, the Gov’t argues that it should not be a determinative “get-out-of-the-Lanham-Act free card.”  On the dilution side, the Gov’t argues that Congress expressly set the rules, including a defense that the accused use is not being used as a mark.  The Gov’t argues here that the Ninth Circuit ignored that provision and instead created its own non-statutory rule regarding the commercial nature of the humor being used.

The Government’s basic argument here is that free speech concerns are properly incorporated into the infringement analysis and should not be given a separate overlay.  The result then is a holistic balancing of speech interests against the misleading nature of a product.  “The Ninth Circuit’s reasoning means that virtually any humorous pirating of a trademark will be “expressive” and thus qualify for heightened First Amendment protection, no matter how misleading.”

The briefing also highlights some concerning uses of marks to sell marijuana products, such as the Oreo knock-off below.  These don’t really seem humorous, but who am I to know?

Read the Gov’t Brief here.  One note, in the case, the appellate court did not expressly consider Bad Spaniels under a more traditional parody test.  The Gov’t suggested vacatur and remand to the 9th Circuit to reconsider on those grounds.