Has Trademark Regulation Develop into a Parody?

by Dennis Crouch

The Supreme Court docket just lately issued its pro-trademark-owner opinion Jack Daniel’s Properties, Inc. v. VIP Merchandise LLC and unanimously vacated the Ninth Circuit favoring the accused comedic copycat.  Justice Kagan delivered the opinion of the Court docket with concurring opinions from each Justice Sotomayor and Justice Gorsuch.  The holding is that the First Modification doesn’t require any particular scrutiny in instances the place the accused exercise is “the usage of logos as logos.” Slightly on this use-as-a-mark scenario, customary rules of trademark legislation apply.  The court docket provided the chance (however didn’t determine) {that a} heightened scenario may nonetheless apply in different conditions reminiscent of use of one other’s mark as art work or for criticism, and so on.

VIP’s canine toy resembles a Jack Daniel’s whiskey bottle, with a number of allegedly humorous alterations. Jack Daniel’s Properties, which owns the logos, demanded VIP cease promoting the toy, resulting in VIP searching for a declaratory judgment that their product neither infringed nor diluted Jack Daniel’s trademark rights. The District Court docket sided with the mark holder after concluding that VIP product used Jack Daniel’s options to determine the supply of their very own merchandise. On attraction, the Ninth Circuit reversed, making use of the Rogers take a look at, which gives a heightened scrutiny in conditions the place a trademark is being wielded in opposition to “expressive components” protectable below the First Modification.  See Rogers v. Grimaldi, 875 F. second 994 (2nd Cir. 1989). After a bit extra process, the case finally reached the Supreme Court docket on a query specializing in the Rogers take a look at.   The court docket tried to subject a considerably slender holding:

With out deciding whether or not Rogers has benefit in different contexts, we maintain that it doesn’t [require any threshold requirement] when an alleged infringer makes use of a trademark in the way in which the Lanham Act most cares about: as a designation of supply for the infringer’s personal items.

Slip Op.  Right here, the court docket discovered that VIP’s use of the mark was as a supply identifier.  What this imply is that VIP doesn’t have an additional particular First Modification excuse.  Nevertheless, customary trademark legislation already has some free speech outlet valves, such because the exception for parody.  The Supreme Court docket remanded the case to the decrease courts to think about whether or not VIP’s “effort to ridicule Jack Daniel’s” supply an excuse within the “customary trademark evaluation.”

Trademark legislation features a particular explanation for motion for giant gamers with “well-known marks” below the doctrines of dilution and tarnishment.  The trademark statute features a fair-use exception, but it surely solely applies in conditions the place the accused dilution/tarnishment is a use “aside from as a designation of supply.” It is a narrower exception that that accessible primarily based upon judge-made legislation in conventional  trademark infringement instances.  And, the Supreme Court docket determined to stay with the statute — with the holding right here that the VIP can not declare truthful use for the dilution/tarnishment as a result of its use of the JD mark was as its personal supply identifier.

Critically, the [statutory] fair-use exclusion [for dilution] has its personal exclusion: It doesn’t apply when the use is “as a designation of supply for the particular person’s personal items or companies.” §1125(c)(3)(A). In that occasion, no parody, criticism, or commentary will rescue the alleged dilutor. It will likely be topic to legal responsibility regardless.

Id.  It is a highly effective boon to these already in energy.

Justice Kagen’s opinion was for the unanimous court docket. Nevertheless, 5 of the justices additionally signed one of many concurring opinions.

Justice Sotomayor, joined by Justice Alito, joined the bulk opinion however wrote individually to emphasise the necessity for warning within the context of parodies and different makes use of implicating First Modification issues. She highlighted the potential danger in giving uncritical or undue weight to surveys in alleged trademark infringement instances involving parody. She argued that surveys must be understood as merely one piece of the multifaceted chance of confusion evaluation and that courts ought to fastidiously assess the methodology and representativeness of surveys.

Justice Gorsuch, joined by Justices Thomas and Barrett, additionally joined with the bulk opinion. Gorsuch wrote individually to underscore that decrease courts ought to deal with Rogers v. Grimaldi, with care. He famous that the Court docket’s choice leaves a lot about Rogers unaddressed, together with the place the Rogers take a look at comes from and whether or not it’s appropriate in all its particulars. He urged decrease courts to be attuned to those unresolved points.

Tune In Subsequent Time period for Extra on TM/Speech: The Supreme Court docket just lately agreed to listen to the case of In re Elster, which entails a California lawyer, Steve Elster, is searching for to trademark the phrase “Trump too small,” a reference to a taunt from Senator Rubio through the 2016 presidential marketing campaign. Elster’s intent was to make use of the phrase on T-shirts to convey a message that he believed some elements of President Trump (in addition to his insurance policies) had been diminutive. Nevertheless, the USPTO rejected the applying, citing the prohibition on registering marks that determine a specific residing particular person with out their written consent. The Federal Circuit dominated in favor of Elster — successfully following the Supreme Court docket’s prior instances of Tam and Brunetti and holding denial of registration as a free-speech violation. The Gov’t’s petition to the Supreme Court docket argued that Elster is completely different than Tam or Brunetti for a few necessary causes: (1) the prohibition on registering one other particular person’s title is an efficient safety of competing rights of privateness / publicity held by the opposite particular person; and (2) the prohibition is viewpoint-neutral and due to this fact must be reviewed with much less scrutiny.