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May 06, 2023

Are ‘parody toys’ free speech?

By: Laura Brown May 10, 2023 The U.S. Supreme Court is

By: Laura Brown May 10, 2023

The U.S. Supreme Court is finalizing opinions on a variety of topics that will affect everything from individual liberty to the student debt. But it also is considering a trademark question that deals with, of all things, a chew toy for dogs and a whiskey company.

The dog toy, "Bad Spaniels Silly Squeaker," is manufactured by VIP Products. The toy resembles a Jack Daniel's bottle but instead says "Bad Spaniels, The Old No. 2, On Your Tennessee Carpet." At the bottom of the label on the toy, it says "43% Poo by Vol." and "100% Smelly." The company claims that they make "parody toys" for the purpose of "poking fun at a dog's life." VIP Products also manufactures other dog toys such as "Mountain Drool" and "Panta."

Jack Daniel's, however, did not find the humor in the dog toy and sued for trademark infringement. It claimed that there was trademark infringement under the Lanham Act and trademark dilution by tarnishment when it associated the brand with dog poop.

First heard in the U.S. District Court for the District of Arizona, Judge Stephen McNamee found in favor of Jack Daniel's, writing that VIP's usage was not protected by the First Amendment.

VIP appealed to the 9th U.S. Circuit Court of Appeals. The 9th Circuit unanimously concluded that the dog toy's "light-hearted, dog-related alterations" was an expressive work and so there was no trademark infringement.

"[T]he Bad Spaniels dog toy, although surely not the equivalent of the Mona Lisa, is an expressive work," wrote Judge Andrew Hurwitz. "The fact that VIP chose to convey this humorous message through a dog toy is irrelevant."

The 9th Circuit reversed the district court by applying an exception to the Lanham Act offered in a 2nd Circuit case, Rogers v. Grimaldi. In that case, Ginger Rogers sued MGM for the production and distribution of a Federico Fellini film about Italian cabaret performers who resembled Rogers and Fred Astaire. Rogers claimed the film, titled "Ginger and Fred," was "false light" defamation. The court created an exception to the Lanham Act and ruled against Rogers.

"Many lower courts have built on…Rogers v. Grimaldi, which allows such ‘expressive uses’ unless the trademark has ‘zero artistic relevance’ or they ‘explicitly mislead’ about their connection to the trademark," William McGeveran, Gray, Plant, Mooty, Mooty & Bennett Professor of Law at the University of Minnesota, explained. This would be "like an independent author calling a book ‘the official guide to Marvel superheroes,’" McGeveran illuminated.

Now, the fate of the dog toy is up to the U.S. Supreme Court. Many companies, including Campbell Soup Company and Levi Strauss & Co., submitted amicus briefs in support of the court taking the case, asserting that they wished to protect their trademarks from parody uses.

Oral arguments, held on March 22, 2023, involved a spirited discussion among the judges for nearly 90 minutes. VIP argued that the dog toys were example of parody that was not likely to cause confusion as to the source or approval.

Some justices appeared to agree with VIP.

"Could any reasonable person think that Jack Daniel's had approved this use of the mark?" Justice Samuel Alito asked Jack Daniel's counsel. "Let me envision this scene. Somebody in Jack Daniel's comes to the CEO and says, I have a great idea for a product that we’re going to produce. It's going to be a dog toy, and it's going to have a label that looks a lot like our label, and it's going to have a name that looks a lot like our name, Bad Spaniels, and what's going to be in—purportedly in this dog toy is dog urine. Do you think the CEO is going to say that's a great idea, we’re going to produce that thing?"

Other justices did not see the obvious parody.

"What is the parody here?" Justice Elena Kagan argued. "Because maybe I just have no sense of humor but what's the parody?"

McGeveran joined one of many academic amici in support of VIP.

"I was among a group of trademark scholars from around the country who supported an amicus brief arguing for the court to protect the ability to use brands in their expression," McGeveran said. "This could be everything from the parody dog toy here, to Andy Warhol's paintings of Campbell's soup, to pop songs name-checking designer labels or characters in a movie drinking a Pepsi. I have written a number of law review articles arguing for this type of protection."

"This is crucial for free speech for two reasons," maintained McGeveran. "First, our culture is pervasively branded, and trademark over-enforcement could make it impossible to portray the world realistically, never mind to critique it or ridicule it. Second, the standard likelihood of confusion test requires a lengthy and expensive court battle, which chills speech regardless of who might ultimately prevail. Rogers is a simple, artist-friendly test that can be adjudicated at the outset of a case on a motion to dismiss."

A decision is expected in June. "The oral arguments made it clear that many justices understand the free speech issues at stake, so I am hopeful they will endorse an approach like Rogers," McGeveran said. "But it is really difficult to predict with certainty."

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