The Supreme Court on Wednesday completes this week’s hearings with a single case, another look at trademark law. This time, the case grows out of a dispute over a humorous spoof of the famous trademarks on Jack Daniel’s whiskey.
The Court will broadcast “live” the audio (no video) of the hearing on its homepage, supremecourt.gov To listen, click on “Live Audio” and follow the prompt when the courtroom scene appears lower on the page. The audio also will be available, under the title of the case, on C-Span TV at this link: cspan.org/supremecourt
Wednesday’s case: Jack Daniel’s Properties v. VIP Products The case will begin at 10 a.m.; it is scheduled for 70 minutes.
Background: As long as the Constitution and the Bill of Rights have existed, there has been a continuing tension between the strong guarantee of free speech in the First Amendment and the separate guarantee in Article I of an exclusive right to use a creative expression that gains protection under patent, copyright or trademark law.
In a well-known copyright decision in 1994, a unanimous Supreme Court gave First Amendment protection for parody when it rejected a copyright violation claim involving a popular song. Parody, the Court said, is a form of “comment and criticism,” and is thus a kind of free speech that does not infringe on the original creative expression.
That ruling shielded a recording by the rap music group 2 Live Crew of the song “Pretty Woman,” when that was challenged by the holder of the copyright on Roy Orbison’s rock ballad, “Oh, Pretty Woman.”
Parody, though, does not always outrank copyrighted expression; it depends on a number of factors, including how much copying of the original is done, and whether it is exploited for commercial gain.
That ruling is at issue as a precedent in this case.
Like the case the Court heard on Tuesday in a separate dispute, this one also tests the meaning of the basic trademark law, the Lanham Act of 1946. But this case goes further, testing whether the First Amendment free-speech right to engage in parody out-ranks the protection of a trademark.
A federal appeals court ruled that a court does not even get to the question of whether a humorous parody is likely to confuse consumers – the most basic inquiry in trademark law – until after examining whether the First Amendment protects the parody.
The Biden Administration’s Justice Department has entered the case to support the appeal by Jack Daniel’s Properties urging the Court to overrule the lower court decision at issue.
Facts of this case: Jack Daniel’s Properties is the well-known distiller of a line of Tennessee whiskey marketed under its name. Its plant in Lynchburg, Tenn., is said to be the nation’s oldest distillery, and the company has been selling its product for more than a century – except when the sale was banned by Prohibition, under the 18th Amendment (in effect from early 1920 until repealed in 1933 by the 21st Amendment).
The company has registered trademarks not only on its name, but also on the familiar black-and-white label on its bottles, and even the shape of the bottles. It says that it has spent millions of dollars promoting and protective its trademarks. The marks are so familiar that surveys show that 98 percent of consumers identify them with Jack Daniel’s whiskeys – an extremely valuable fact in marketing.
Among other licenses it issues for use of its trademarks, it has agreements with producers of pet products, such as dog leashes and collars and dog houses.
Jack Daniel’s lawyers reacted promptly and aggressively in 2014 when a Phoenix company – VIP Products LLC – began selling a rubber chew toy for dogs under the name “Bad Spaniels” (sort of rhyming with Jack Daniels). Its packaging is similar to the distiller’s label and bottles.
The Arizona company uses dog poop as a spoofing theme on its products; it also sells dog toys that use mimics of the names of other well-known trademarks – such as a toy named “Butt-Wiper” to play off of Budweiser beer’s trademark. (Budweiser in 2008 obtained a court order to stop that gimmick.)
VIP was told by Jack Daniel’s lawyers to stop the imitation by using the “Bad Spaniels” theme, but VIP countered with a lawsuit seeking a ruling that it was not infringing on Jack Daniel’s trademarks. The Tennessee distiller replied with its own lawsuit, claiming infringement of its famous marks.
A federal trial court ruled for Jack Daniel’s, finding a likelihood that consumers would be confused by the dog toy labeling and packaging. That court also ruled that VIP’s marketing campaign tarnished the Tennessee company’s marks, and rejected VIP’s claim that its commercial strategy was humorous parody, protected by the First Amendment.
A federal appeals court, however, ruled that it would not even rule on whether the Lanham Act had been violated until after first examining whether VIP’s commercial tactics were protected by constitutional guarantees of free speech, as a form of humorous parody. While it commented that VIP’s dog toy “surely was not the equivalent of the Mona Lisa,” the appeals court decided that its marketing was shielded by the First Amendment. It went on to reject infringement claims under the Lanham Act, finding that VIP had neither tarnished the trademarks nor diluted those marks as identifiers only of Jack Daniel’s products.
The Tennessee company asked the Supreme Court to take on the dispute, but the Court refused in January 2021, apparently because the appeals court had ordered the trial court to take a new look at the case.
The trial judge then ruled reluctantly that VIP’s tactics were protected by the First Amendment, but commented that it was doubtful that any trademark holder could win an infringement claim under the standard the appeals court had laid down for humorous spoofing of those rights.
The appeals court rejected a new appeal by Jack Daniel’s, based on its first ruling. That led the Tennessee company to file a new appeal to the Supreme Court – this time succeeding in getting the dispute before the Justices. It picked up the Justice Department’s support along the way.
The questions before the Court: Does humorous use of someone else’s trademark in selling a company’s own commercial products get broad First Amendment protection as free speech, and does the fact that the imitator is using humor mean that it is not even acting in a commercial fashion under federal trademark law?
Significance: This case may well be the strongest illustration yet of the long-standing tension between First Amendment rights and the competing constitutional and statute-based rights to protection for intellectual property (trademark, copyright, patent).
The federal appeals court’s core ruling against Jack Daniel’s clearly elevates the First Amendment over the congressional commands written into the Lanham Act – commands that are implementations of Article I’s protection of commercial expression.
That creates a considerable challenge for the current Justices on the Supreme Court. The conservative majority has fashioned strong protections for free speech, but it also has shown considerable sympathy for the legal claims of commercial businesses.
The Court did not go as far in its “Pretty Woman” copyright ruling in 1994 as the appeals court did in this case, but the 1994 decision did set intellectual property law on the path toward more robust First Amendment protection.
After tomorrow, the Court’s hearings will resume next Monday. It will examine a legal question about the patent on a drug important in lowering harmful cholesterol in the blood and it will review the constitutionality of a law that makes it a crime to entice foreign citizens to come to the U.S. in hopes of becoming citizens, charging large fees for that practice.