Now here’s a ‘tail’ of two canines. Or more specifically, recent trademark parody cases involving man’s best friend…and the brand manager’s worst enemy. First, we’ll provide some background discussion before delving into the curious case of Chewy Vouiton¹ and then focusing on our primary subject, the infamous Jack Spaniels himself.²

It’s a Dog-Eat-Dog World: IP Infringement, Tort Law and the Parody Defense

Under Branding Law doctrine, corporate interests have traditionally been asserted through intellectual property infringement claims, while personal branding rights have typically relied on tort actions. For instance, the maker of parody trading cards successfully sought declaratory judgment over Major League Baseball on grounds that the potential damage to baseball players’ rights of publicity were outweighed by First Amendment considerations.³ Likewise, the U.S. Supreme Court ruled in favor of the defendant adult magazine in holding that a disparaging interview with Rev. Jerry Falwell as part of a mock advertisement was parody, rather than actionable libel.⁴

Meanwhile, the U.S. Supreme Court ruled that 2 Live Crew’s rap song based on Roy Orbison’s classic, “Pretty Woman,” was not copyright infringement, but parody.⁵ Particularly relevant under Branding Law, the Second Circuit ruled in favor of the defendant in holding that protagonist in The Greatest American Hero television program was merely a parody of the famous Superman character and not an infringement of copyright.⁶ 

Similar to the above copyright examples, recognizing parody as protected speech under the First Amendment provides a strong defense against trademark infringement and dilution claims as well. Statutory authority for each resides within the Copyright Act and Trademark Act, respectively.⁷  Furthermore, in addition to the affirmative defense of fair use, as set forth in the Lanham Act, parodists may rely on the doctrine of nominative fair use, where the free speech is considered noncommercial.⁸

As a general rule, to avoid liability there must be elements of satire present which are referential to the famous IP in question but obvious enough to be recognized as parody and transformative in some way. At the same time, defendant’s use must be de minimus, while avoiding any suggestion of sponsorship or affiliation with the original. What makes these cases so unique from standard trademark or copyright infringement is that the new work will be different but permissibly similar at the same time, often straddling a fine line that later must be adjudicated in court.

Particularly at issue in such trademark actions is whether the parodist’s work originates from the same source as the original, creating a likelihood of confusion in some jurisdictions, or more typically, trademark dilution involving what’s considered a famous mark, covering unrelated goods or services. It is then the court’s role to determine whether the defendant’s parody claim reflects a valid balancing of free speech over commercial branding interests.

For these reasons, Mattel failed to successfully establish either copyright infringement or trademark dilution by MCA Records over the hit song “Barbie Girl”. Based on the defense of nominative fair use, First Amendment rights for the parodist prevailed over plaintiff’s commercial interests against potential tarnishment of their beloved Barbie brand.⁹

Running with the Big Dogs: Louie Vuitton v. Chewy Vuiton

Turning now to the trademark side of corporate branding, there have been many important Branding Law parody cases including a First Amendment defense. Since the ordinary consumer would recognize the difference between the whimsical Chewy Vuiton for inexpensive dog toys and the venerable Louis Vuitton brand, commonly referred to as “Louie Vuitton” for luxury leather goods and such, the plaintiff chiefly relied on the doctrine of trademark dilution, rather than infringement.¹⁰ Essentially, it was argued that the mere existence of a similar and mocking name for dissimilar goods, reduced the value of the famous brand through blurring and tarnishment.

In 2006, the Trademark Dilution Revision Act (TDRA) created an express exemption for parodies, however, carving out an exception to what could be deemed actionable trademark dilution under the Federal Trademark Dilution Act, as long as the defendant’s use is obviously a parody and does not create source confusion.¹¹ So it was not surprising that the Fourth Circuit ruled in favor of the defendant, concluding that the Chewy Vuiton mark simply suggested the famous mark without any trademark misappropriation or loss of distinctiveness in the original.

Double Dog Dare: Jack Daniels v. Bad Spaniels   

Almost ten years later, some of the same issues were being litigated in the Ninth Circuit. Essentially, the dog toy in question this time featured a rubberized rendering of a squared bottle, featuring the whimsical wording, “Bad Spaniels, the Old No. 2, on your Tennessee Carpet” as an obvious parody on “Jack Spaniels, the Old No. 7, Tennessee Whiskey” while also including a disclaimer of non-affiliation.¹²

First, the lower court found defendant’s chew toy lacking in artistic value, making it non-expressive and ineligible for First Amendment protection. However, the appellate court then reversed, finding protected use under the Rogers test.¹³ In other words, the plaintiff was unable to establish that the defendant’s use of the mark was either (1) artistically irrelevant to the underlying work or (2) explicitly misled consumers as to the source of said work.

As such, commercial branding interests were deemed less important than creative expression, particularly since Bad Spaniels only made oblique reference to the subject material and conveyed a humorous message. Furthermore, the court opined that the dog toy was “surely not the equivalent of the Mona Lisa”, while also acknowledging that the parody was sufficiently expressive despite the product in question being sold commercially.¹⁴

Upon remand, the district court then affirmed in reasoning, “A parody functions just like a mash-up. It modifies and plays with the elements of an original work to express something new and different.”¹⁵ Just last month, the U.S. Supreme Court granted certiorari in what should be a 2023 ruling of much interest to trademark owners and brand managers everywhere.

Essentially, the plaintiff is arguing that the Ninth Circuit improperly extended the Rogers test in the context of artistic expression, upsetting the delicate balance between trademark law and free speech. Furthermore, they assert that the appellate decision contradicts an allegedly more nuanced evaluation by the Second, Fourth, Fifth, Seventh, Eighth, and Tenth Circuits. Finally, the plaintiff contends that the Ninth Circuit erred in applying the TDRA parody exclusion since it should only be relevant when the parody in question is not source-identifying.¹⁶ Tellingly, the defendant contends that there is no circuit split whatsoever.¹⁷

Letting Sleeping Dogs Lie: Will SCOTUS Change Everything?

While the appellate court’s reversal seems to be appropriate, based on the weight of case law, others have taken the opposite approach, including even the Ninth Circuit itself, further underscoring a certain judicial inconsistency throughout these heavily fact-based determinations.¹⁸ Hence, the plaintiff appears to be somewhat over-stating its case.

Furthermore, the Fourth Circuit’s reasoning in favor of Chewy Vuiton can be distinguished from the Ninth Circuit’s in Jack Spaniels as the former turned on the TDRA, while the latter was based on the Rogers test. So despite encountering similar fact patterns and reaching essentially the same conclusion, each circuit applied its own distinctive analysis.

We’ll soon see whether a conservative Supreme Court agrees with the Ninth Circuit appellate court, as their interpretation could have major Branding Law implications in regard to what’s considered acceptable free speech, particularly in the context of corporate branding interests.

As recently as this past term, and as anticipated in our preview of key cases for 2022, the Court did find in favor of Google’s acceptable derivative use of Oracle’s copyrighted API software code in a major win for open source developers everywhere.¹⁹  Perhaps this particular decision could suggest a ruling in support of creative expression over commercial branding, or it could simply signal a similarly pro-business approach, in the trademark context this time.

Similarly, the Court recently rejected the longstanding bar to federal trademark registration for so-called ‘immoral and scandalous’ marks, supporting THE SLANTS²⁰ and FUCT²¹ for a band of Asian-American musicians and a brashly-named apparel line, respectively. So in a similar spirit, they could potentially side with “Bad Spaniels, the Old No. 2, on your Tennessee Carpet”.

These decisions in particular, along with recent rebranding of long-established consumer products and professional sport teams, such as the Washington Commanders (née Redskins) and Cleveland Guardians (née Indians), will be detailed in our forthcoming piece.

Meanwhile, there’s an interesting 2023 companion case before the Court for determining the permissible scope of copyright fair use but this time, falling outside of the realm of parody. Along with Jack Spaniels, the Court is currently considering whether the Andy Warhol Foundation may validly claim its own copyright in a series of art prints derived from a copyrighted photo of the musical artist Prince.²²

Both decisions could essentially define the acceptable reach of IP law for years to come, also having important implications for future cutting-edge issues, such as whether AI-generated works are infringing or merely derivative. Likewise for virtual trademark use in the metaverse, such as the sale of digital “MetaBirkins” NFT bags, as featured earlier this year in our Bloomberg Law article, Non-Fungible Tokens and Intellectual Property.²³

Wagging the dog, indeed!

________________

¹ Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 260 (4th Cir. 2007).

² VIP Prods. LLC v. Jack Daniel’s Props., 953 F.3d 1170, 1172 (9th Cir. 2020).

³ Cardtoons v. Major League Baseball Players Association, 95 F. 3d 959 (10th Cir. 1996).

⁴ Hustler Magazine, Inc. v. Falwell, 485 U.S. 46 (1988).

⁵ Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994).

⁶ Warner Bros. Inc. v. American Broadcasting Companies, Inc., 720 F.2d 231 (2d Cir. 1983).

⁷ 17 U.S.C. § 107; see infra note 11.

⁸ See New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).

⁹ Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 906 (9th Cir. 2002).

¹⁰ See supra note 1.

¹¹15 U.S.C. § 1125(c)(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.

¹² See supra note 2.

¹³ See Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).

¹⁴ VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1175 (9th Cir. 2020).

¹⁵ VIP Prods. LLC v. Jack Daniel’s Props., Inc., 2021 WL 5710730 (D. Ariz. Oct. 8, 2021).

¹⁶ See Plaintiff’s Brief, Jack Daniel’s Properties, Inc. v. VIP Products LLC, 22-148 (U.S.).

 ¹⁷ See Defendant’s Brief, Jack Daniel’s Properties, Inc. v. VIP Products LLC, 22-148 (U.S.).

¹⁸ See e.g. Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997). [9^th Cir. rejecting parody defense and affirming preliminary injunction barring publication and distribution of “The Cat NOT in the Hat” even though “Dr. Juice” was listed as the alleged author, clearly in satirical reference to O.J. Simpson].

¹⁹ Google v. Oracle, 141 S. Ct. 1163 (2021).

²⁰ Matal v. Tam, 137 S. Ct. 1744 (2017).

²¹ Iancu v. Brunetti, 139 S.Ct. 2294 (2019).

²² Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 21–869 (U.S.); see also, Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d 312, 326 (S.D.N.Y. 2019) and Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith 19-2420-cv, 2021 U.S. App. LEXIS 8806 (2d Cir. Mar. 26, 2021).

²³ Hermes Int’l v. Rothschild, 22-CV-384 (JSR) (S.D.N.Y. May 18, 2022); see also, William Scott Goldman, Non-Fungible Tokens and Intellectual Property, Bloomberg Law (March, 2022).