Jack Daniel's Seeks Supreme Court Review of Ninth Circuit's "Bad Spaniels" Ruling.
The Petition for Writ of Certiorari filed by Jack Daniel's in the "Bad Spaniels" case is worth a read. [pdf here]. The Appendix may be found here. A response is due on or before September 16, 2022.
Jack Daniel's states the "questions presented" as follow:
QUESTIONS PRESENTED
Respondent VIP Products LLC markets and sells dog toys that trade on the brand recognition of famous companies such as petitioner Jack Daniel’s Properties, Inc. The district court found that VIP’s use of Jack Daniel’s trademarks to sell poop-themed dog toys was likely to confuse consumers, infringed Jack Daniel’s marks, and tarnished Jack Daniel’s reputation. The Ninth Circuit, however, held that VIP’s First Amendment interest in using Jack Daniel’s trademarks as its own marks on funny dog toys conferred special protection from infringement claims and rendered VIP’s commercial dog toys “noncommercial” and thus exempt from dilution-by-tarnishment claims. The questions presented are:
1. Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims.
2. Whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act.
Jack Daniel's argues that the petition should be granted because (1) the Courts of Appeals are divided on the Questions Presented, (2) the Questions Presented Are recurring, important, and squarely presented, and (3) the decision below is egregiously wrong.
Read comments and post your comment here.
TTABlogger comment: Seems to me that the Ninth Circuit has gone way too far.
Text Copyright John L. Welch 2022.
posted by John L. Welch @ 9/07/2022
2 comments
2 Comments:
I think the Ninth Circuit stretched way too far the concept of what qualifies as an expressive work entitled to free speech treatment under the Rogers analysis. Stretching “expressive works” to include ordinary consumer products potentially encompasses just about everything. If a dog toy qualifies as an “expressive” work immune from trademark infringement, then why not a box of breakfast cereal containing “expressive” images of a brand mascot, graphics or slogans? Applying the Ninth Circuit’s view, the label on almost any ordinary consumer product could be argued to contain some “expressive” message. What kinds of products remain subject to traditional trademark liability? I think the Ninth Circuit improperly cut adrift the Rogers’ rule from its basic rationale and purpose.
The courts don't like trademark infringement claims. Many federal judges roll their eyes when they see these claims. And can you blame them?
Can you imagine your mindset if in any given day you touched the following files: 1) a child porn case, 2) a drug smuggling case with maybe a 15 year sentence, 3) a human trafficking case where perhaps some of the humans being trafficked died after being left in a locked container, and 4) likelihood of confusion between JACK DANIELS for whiskey and BAD SPANIELS for dog toys? You'd want to throw your hands in the air and say to the trademark plaintiff's lawyer, "Come on, man!?! Are we REALLY spending time on this?"
Of course, this mentally swings both ways. When article 3 judges see what they believe is a slam dunk, but a nuanced approach might reveal defenses, article 3 judges will often railroad defendants because, again, who has time to dive into the weeds of the Tea Rose Doctrine when the next case up seeks habeas relief from a sentence of death?
There is a huge disconnect in the way the USPTO/TTAB sees likelihood of confusion and how article 3 courts see it. USPTO/TTAB practitioners beware.
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