Has Trademark Legislation Grow to be a Parody?

by Dennis Crouch

The Supreme Courtroom 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 Courtroom 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 state of affairs, customary ideas of trademark regulation apply.  The court docket provided the likelihood (however didn’t resolve) {that a} heightened state of affairs might nonetheless apply in different conditions equivalent to 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 looking for a declaratory judgment that their product neither infringed nor diluted Jack Daniel’s trademark rights. The District Courtroom 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 check, which gives a heightened scrutiny in conditions the place a trademark is being wielded towards “expressive components” protectable underneath the First Modification.  See Rogers v. Grimaldi, 875 F. 2nd 994 (2nd Cir. 1989). After a bit extra process, the case ultimately reached the Supreme Courtroom on a query specializing in the Rogers check.   The court docket tried to subject a considerably slim holding:

With out deciding whether or not Rogers has advantage 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 regulation already has some free speech outlet valves, such because the exception for parody.  The Supreme Courtroom remanded the case to the decrease courts to contemplate whether or not VIP’s “effort to ridicule Jack Daniel’s” supply an excuse within the “customary trademark evaluation.”

Trademark regulation features a particular explanation for motion for giant gamers with “well-known marks” underneath the doctrines of dilution and tarnishment.  The trademark statute features a fair-use exception, nevertheless it solely applies in conditions the place the accused dilution/tarnishment is a use “apart from as a designation of supply.” This can be a narrower exception that that accessible based mostly upon judge-made regulation in conventional  trademark infringement instances.  And, the Supreme Courtroom determined to stay with the statute — with the holding right here that the VIP can not declare honest 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 individual’s personal items or companies.” §1125(c)(3)(A). In that occasion, no parody, criticism, or commentary will rescue the alleged dilutor. It is going to be topic to legal responsibility regardless.

Id.  This can be 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 threat 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 Courtroom’s resolution leaves a lot about Rogers unaddressed, together with the place the Rogers check comes from and whether or not it’s right 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 Courtroom just lately agreed to listen to the case of In re Elster, which entails a California lawyer, Steve Elster, is looking 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 features of President Trump (in addition to his insurance policies) had been diminutive. Nevertheless, the USPTO rejected the appliance, 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 Courtroom’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 Courtroom argued that Elster is completely different than Tam or Brunetti for a few necessary causes: (1) the prohibition on registering one other individual’s identify is an efficient safety of competing rights of privateness / publicity held by the opposite individual; and (2) the prohibition is viewpoint-neutral and due to this fact must be reviewed with much less scrutiny.