Does creative marketing using parodies avoid trademark infringement?
Jack Daniel's Properties v. VIP Products says "not so fast."
In the recent landmark Supreme Court case Jack Daniel's Properties v. VIP Products, the court delved into the question of whether using parodies of another company’s trademark rights within the branding of one’s own products can be used to thwart allegations of trademark infringement and dilution by the trademark owner. In particular, VIP Products produced dog toys resembling the iconic Jack Daniel's whiskey bottle and labeling and attempted to use a “parody” defense in response to Jack Daniel's charge of trademark infringement and dilution.
Unfortunately for VIP Products, the Supreme Court did not allow the use of the parody defense under the circumstances of this lawsuit – which will have ramifications that extend beyond the alcoholic beverage industry and into at least any product packaging and labeling trademark dispute where a parody is attempted. As such, this article examines how the principles laid down in Jack Daniel's Properties v. VIP Products may apply within the Quick Service Restaurant (QSR) industry.
In the original dispute, Jack Daniel's Properties, the owner of the famous Jack Daniel's trademark and trade dress, sued VIP Products for creating dog toys resembling their distinctive source identifiers which make up aspects of its brand. Those source identifiers include at least the Jack Daniel's name, whisky bottle shape, label design, and overall appearance. VIP has many spoof products that parody famous brands, including Doggie Walker (Johnnie Walker), Dos Perros (Does Equis), and Smella Arpaw (Stella Artois).
The lower appellate court had held that VIP’s Bad Spaniel’s dog toy product - including use of that name, their product shape, and spoof label - was an expressive work and entitled to first amendment protection. They also determined this use was non-commercial. The main issue was whether the trade dress of an unrelated product that will not directly take away sales from the brand owner, such as dog toy sales as compared to the sale of whisky, could infringe upon or dilute the trademark and trade dress rights of the rights holder when it was clear that a parody was at play.
The image below sets forth the trademarks and trade dress at issue, showing the attempted parody involved in the dispute:
The U.S. Supreme Court ruled in favor of Jack Daniel's Properties, emphasizing that the two-factor “Rogers Test” was not applicable when the attempt at the parody was being used as a trademark or source identifier itself, and that the non-commercial exception to dilution does not apply in a parody setting. In the view of the Supreme Court, a parody of a trademark is not simply a free pass to infringe, no matter if the infringing product is for commercial use or a humorous message.
The ruling in Jack Daniel's Properties v. VIP Products highlights the importance of protecting and policing the trademark and trade dress rights of established brand owners in the QSR industry. Brand owners spend substantial resources and time developing a consistent and recognizable brand image, which includes the layout and design of their restaurants, names, logos, slogans, packaging, and more. They also make significant efforts to police their brands. This case reassures that these efforts by brand owners and the current state of the law should allow them to stop the attempts by others to profit on their brands under the guise of “parody.” In addition, this decision should also allow brand owners to more easily monetize their brand outside of their core products and services without as much concern of others creating parodies, when licensing their trademarks and trade dress in different industries/product categories. This decision reinforces the notion that brand owners must be vigilant about maintaining control over the use of the various source identifiers which make up their overall brand image, even when applied to products or services outside of their core focus.
If you have any questions about this brand matter or any other intellectual property law matter, please reach out to Jim Muraff at (jmuraff@mcdonaldhopkins.com) or another member of McDonald Hopkins' intellectual property team.
