Many courts have adopted the so-called Rogers test under which a trademark infringement claim against an expressive work such as a movie may be dismissed early in a case on First Amendment grounds. See, e.g., Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002) (adopting test from Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989)).
In Jack Daniel's Properties, Inc. v. VIP Products, LLC, 599 U.S. 140 (2023), the Supreme Court held that a party does not need to satisfy the Rogers threshold test when the expressive work is used as a source-identifing trademark. Previously discussed here.
On remand, the District of Arizona has held that Jack Daniel's has not established by a preponderance of the evidence that “Bad Spaniels” infringes on Jack Daniel's trademark rights, noting that "a successful parody is unlikely to be confusing." VIP Products v. Jack Daniel's Properties, Inc., No. CV-14-02057-PHX-SMM (D. Az. Jan. 23, 2025).
The district court held that three of the Sleekcraft factors for trademark infringement—similarity of the marks, VIP's intent, and strength of Jack Daniel's mark—were neutral or flipped in VIP's favor after accounting for parody.
The Court finds that VIP has prevailed on the issue of trademark infringement; however, the same cannot be said for trademark dilution. In fact, the qualities on which “Bad Spaniels” runs afoul of the Lanham Act's cause of action for dilution by tarnishment are the very qualities that help “Bad Spaniels” to prevail on a trademark infringement claim, as they are the qualities that create contrasts with Jack Daniel's mark by way of irreverent juxtaposition. As McCarthy observed, “[t]he irony is that the more distasteful and crude the parody, the less likely it is that the public will mistakenly think that the trademark owner has sponsored or approved it.” § 31:153.
“Bad Spaniels” finds itself in the category of a non-confusing parody product that is nonetheless impermissible under the Lanham Act's cause of action for tarnishment.***
Thus, a parodic product that does not create confusion as to its source may still, by way of the irreverent message qualifying it as a parody in the first instance, create negative associations and reduce the value of the famous mark to its owner.
The district court found that "Jack Daniel's has shown, by way of expert testimony on well-documented consumer psychology research, that “Bad Spaniels” is likely to tarnish Jack Daniel's trademarks and trade dress." In particular, the district court noted expert testimony that "relied on consumer psychology research to establish that when food or beverage is associated with defecation, disgust is generated in the consumer's mind with respect to that food or beverage which has been associated with defecation."
The district court also noted "its prior conclusion that Jack Daniel's has shown that its reputation is likely to be harmed by association with a dog chew toy that replaces Jack Daniel's whiskey's listed qualities with dog feces-related humor," also citing Anheuser-Busch, Inc. v. Balducci Publ'ns, 28 F.3d 769, 777 (8th Cir. 1994) (finding “obvious” tarnishment where ad parody suggested that Michelob beer contained oil).
VIP also argued a First Amendment challenge to the Lanham Act's prohibition on trademark dilution by tarnishment, which the district court held was waived because VIP's challenge was not raised in the pleadings.
Accordingly, the district court stated that it would issue a permanant injunction against VIP's "Bad Spaniels" dog toy based on dilution by tarnishment. An appeal to the Ninth Circuit appears likely.
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