Hear Ye! Hear Ye! Some larger policy implications of the dog toy
The much-anticipated oral arguments for the case between Jack Daniel’s and a dog toy company, VIP Products, took place at the Supreme Court of the United States on March 22 . One of the issues is whether “dog toys [are] automatically entitled to heightened First Amendment protection because they conveyed a ‘humorous message’ which commented on Jack Daniel’s asserted marks” . At the heart of this dispute lies the 9th Circuit’s application of the Rogers test that protects an artistic work under the First Amendment (and does not violate the Lanham Act) “[(i)] unless the artistic work has no artistic relevance to the underlying work whatsoever, or, [(ii)] if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”
While the arguments predictably centered on the likelihood of confusion, protected speech, and commercial or non-commercial use, there was some levity as well.
For example, Justice Sotomayor introduced a hypothetical on political speech involving a donkey or an elephant on a T-shirt. Justice Alito joked that he “went to a law school where [he] didn’t learn any law.” Referring to the solicitor general’s upcoming arguments, Justice Gorsuch remarked that he wasn’t really sure how much of a friend the federal government was to Jack Daniel’s, and Lisa Blatt (who represented Jack Daniel’s) agreed, drawing some more laughter. Justice Kagan also drew laughter when she asked counsel for VIP Products, Ben Cooper, “What is the parody here? …. [b]ecause maybe I just have no sense of humor.”
Justice Kagan asked why the issue could not be framed under a legal principle such as “this [dog toy] is an ordinary commercial product using [Jack Daniel’s] mark as a source identifier. That doesn’t get any special protection.” She further clarified that the Rogers test has been generally applied in cases that look different from this case. In response to a comment from Justice Alito about the First Amendment taking precedence over the Lanham Act, Ms. Blatt emphasized that trademarks “have been around since 1500s. They predated the First Amendment.” Justice Gorsuch clarified that there may be “as-applied cases in which trademark law does butt up against the First Amendment.” For VIP Products, Mr. Cooper argued that the parodic element in the dog toy is not “proposing a transaction” because they are not selling a “bottle of poo,” and therefore their use is non-commercial. As Ms. Blatt correctly pointed out in her rebuttal, it is “somewhat galling” that the solicitor general’s office did not mention the USPTO’s position, given the USPTO’s central role in over 30 years of rulemaking.
Overall, there was reluctance to strike down the Rogers test, concern about its overbroad application, and some justices were clearly not humored by the alleged parody of the dog toy. There was some sentiment that the District Court may not have given due consideration to the parodic elements of the dog toy. It is likely that the case will be decided narrowly, reversed and remanded to the District Court for further analysis of the alleged parody. Such analysis may result in an “as-applied case” contemplated by Justice Gorsuch. Will we see a sequel at the Supreme Court? Stay tuned.
However, aside from the legal principles and precedents at stake here, there are some larger policy considerations that were mentioned in various briefs (including the amicus brief  submitted by the Intellectual Property Owners’ Association (IPO) and co-authored by myself and two of my colleagues), that the Supreme Court and the government did not touch upon, such as:
- Weakening of IP rights
Trademarks, along with other IP rights, are the bulwark of the U.S. economy. If the 9th Circuit’s decision is allowed to stand, there is nothing to stop companies from flooding the market with look-alikes and rip-offs under the cover of the First Amendment/parody protection by adding humorous messaging to a copycat product. This will lead to a weakening of the IP regime.
- Implications for national security
In the present global climate of rapidly evolving strategic alliances, upholding the 9th Circuit’s decision could open the door for foreign agents to flood the U.S. market with rip-offs, bleed iconic trademarks, weaken our industries and the economy, and thereby threaten our long-term national security.
- Implications for public safety
Trademarks for popular food and beverage items could be used on products related to drugs, pornography, and other non-FDA approved items.
Additionally, rip-offs, such as VIP’s dog toys, may appeal to children, and therefore bear a risk of exposing children to adult brands associated with alcohol.
- Implications for trademark owners
If a copycat product has quality or safety issues, these issues may be unfairly transferred to the legitimate owner of a trademark, and could erode the brand recognition and goodwill that the trademark owner has spent significant time and money developing.
Time and again, we seem to get mired in legal wrangling, and lose sight of the bigger picture. As a nation, we are losing out to our competitors by creating unnecessary hurdles in subject-matter eligibility for patents. Let’s hope the Court provides some clarity on trademarks.
 VIP Products LLC v. Jack Daniel’s Properties, Inc., 953 F.3d 1170 (9th Cir. 2020).
 Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).