It feels like the outcome boils down to this: if you build a business around making your product look exactly like another business’s trademark, you’re not protected from a lawsuit.
That doesn’t feel like the end of the world. (Obligatory IANAL.)
That doesn’t feel like the end of the world. (Obligatory IANAL.)
This is just once again showing that intellectual privilege laws are too draconian and the only solution is massive congressional reform, but that has little hope as just like the Supreme Court, the congress believes in intellectual privilege maximalism, any reform from congress will likely expand not reduce intellectual privilege
expression that everyone supports generally does not need protection in the first place, so laws that protect only expression that is as broad appeal or support are pointless.
protection of expression needs to be for things we dislike, despise or even find abhorrent, people that claim they support protection of expression but for only things they find value in are in reality declaring they do not support freedom of expression at all.
That’s “expression”. What I’m trying to do is come up with a hypothetical where you really would like there to be a test for what is and is not protected.
The Supreme Court called spending money on political campaigns “expression” in the Citizens United decision, do you support that?
You can call literally any act expression, the extreme of which is literally anarchy.
Yes... I do.
Why should Donald Trump be able to spend millions of his own money to create political speech, but I can not spend $1 along with 1 million of my friends to counter is. Contrary to what the common tag line is of "corporations are people now" the court recognized that corporations are made up of people, as such the people acting as a group ( corporation) are entitled to protections just as if they were acting alone as an individual.
>>So you’d be ok with someone using AI to generate an image of your self/spouse/child doing something unspeakably awful and putting it up on billboards around town with a suggestion that people take matters into their own hands?
Well that escalated quickly, that said in generally... I would probably consider that protected. The last part would be murky as I so recognize the "True Threat" doctrine, of course I am also a self defense absolutist along with a free expression absolutist, so if the hypothetical bill board expressed a true threat I believe it with in my ethical right to defend myself from that true threat.
Per the government's argument, "the government would have the power to ban books if those books contained even one sentence expressly advocating the election or defeat of a candidate and were published or distributed by a corporation or labor union."
It wasn't some crazy hypothetical about violence being an act of personal expression, or something like that. It was about other people can organize to share verbal, written, and recorded political ideas.
As with many Supreme Court rulings, the political spin far eclipsed the actual decision and arguments.
Also, all this case establishes is that there is no exception for comedy/sarcasm when it comes to a trademark copying someone else's trademark.
It is actually very likely that the case will be won by Bad Spaniels on simpler grounds - that their trademark will not confuse anyone into thinking they are buying a Jack Daniels bottle. And that is the right thing that the courts should decide - but it was something that Bad Spaniels was trying to avoid.
Except that it would not happen. In a word without trademark protection, people would be like "what the heck is an iPhone, what does it do?" because the word iPhone would have no meaning. You would have to sell based on capabilities, rather than brand name. There would have to be sufficiently strong laws against false advertising and deceptive marketing, but I can see number of advantages over the current system.
I agree with the rest of your post. The whole case is increasingly looking like a successful publicity stunt by the two companies to me. I don't think I would know anything about Bad Spaniels otherwise, and while Jack Daniels is well known, the way addiction works I would not be surprised if a large number of people were hitting their local liqueur store after seeing this case on the news.
I am not aware of this ever having occurred across history. Instead, brands become personal. You don’t buy an iPhone, you buy master Tim Cook’s phone.
And the reason is also self-evident: it is very hard if not impossible to assess all of the relevant capabilities of a manufactured product just on an quick inspection. Even if you were able to do so for one category of product, you'll not be an expert in every category. As such, the only way to know the true quality of products you are buying is to rely on the reputation of the one crafting them, and the branding of the products is used to establish the chain of trust (this shoe has such-and-such craftsman's mark, so I know its a quality shoe because I've bought other shoes from them in the past and they lasted two decades).
Even if you had very strong laws to prevent false advertising of features, it's extremely cost-prohibitive to establish build quality objectively without relying on the reputation of the maker. How would that even look? What would you expect to see on a non-branded shirt to tell you whether it's a good quality weave or a poor one? Whether the color is strongly bonded to the fabric or it will wash off? Whether the seams are sturdy or prone to breaking?
If you read the article carefully, SCOTUS agrees. What the toy maker was trying to do was use a "shortcut" called the "Rogers test"; all that SCOTUS said was that the "Rogers test" shortcut wasn't applicable in this case. That means it goes back to normal trademark "customer confusion", which SCOTUS seems to think will go in favor of the toymaker; from the article (emphasis mine):
> Elizabeth Brannen, a partner at Stris & Maher, said Jack Daniel's victory "could turn out to be pyrrhic." The whiskey maker will still have to prove VIP's toys are likely to confuse potential customers into thinking it was affiliated with them in order to win its infringement case.
> "The likelihood of confusion analysis will still take the challenged product's funny message into account," Brannen said. She noted that the high court said consumers are "not so likely to think that the maker of a mocked product is itself doing the mocking."
Here, the court is saying that Jack Daniels gets to make its case to a jury.
This case is a classic "nothing to see here" moment being paraded as if the sky is falling.
I get it though, I sometimes have to read a ruling five times just to figure out what the hell has been decided.
The cases where SCOTUS attracts the most attention are the ones where fairly broad decisions are made, or at least hinted at.
The public is usually wrong in their understanding of it -- as non-experts practically always are. Nonetheless, SCOTUS does make, several times a year, decisions that have a direct bearing on people's lives. They may not understand the nuances of the decision but they know when their rights have expanded or collapsed.
Such decisions are usually issued at the end of June. Expect there to be several significant and not-at-all-narrow decisions very soon.
That's not SCOTUS's job and that's not what they do (usually). It doesn't carry the voice of the people and has no mandate to do what the people want. Its job is to decide whether our system of laws as constructed by Congress (which is the voice of the people) and as bounded by the Constitution ultimately allows A or B to prevail. In no way should a ruling in favor of A be construed as an endorsement of A's action.
See Antonin Scalia's strongly worded thoughts about the Texas v Johnson flag-burning case, in which he voted contrary to his personal convictions about the morality of Johnson's actions. Because, ultimately, he knew his vote was not a moral judgment but a legal one.
For those following along at home, when a case is vacated and remanded per the Judgment, what happens from there in a particular case is for the lower courts—SCOTUS opinion in-hand—to decide, if the parties choose not to settle anyway.
EDIT: Also, just as a background again for those following along at home, here is an explanation of the Rogers Test: https://moellerip.com/the-moeller-blog/the-rogers-test-free-...
> Thus was born the Rogers Test, which may only be applied to non-commercial marks, which determines that the title of an artistic work is protected under free speech from the Lanham Act when a) the title of the work has some artistic relevance to the underlying work and b) that the title is not explicitly misleading as to the source of the content of the work.
This is not a good take on the Supreme Court ruling, at all. I generally agree with your rhetoric about IP maximalism, but this is not the right case to trot it out for.
This case was not about whether anyone was confused. The ruling does not take a position on whether there was confusion between Bad Spaniels and Jack Daniels.
Instead, this ruling says that humor is not an absolute defense in trademark disputes. It reverses a Ninth Circuit ruling that held that, in the case of humor, the court does not need to even evaluate whether or not there was confusion.
This ruling sends the case back to the Ninth to evaluate the totality of the case, including fair use, parody, and whether the for-profit Bad Spaniels is appropriating Jack Daniels' trademarks to sell their products in a way that a reasonable person would think Jack Daniels was involved in.
The Ninth may very well find that no, there is no confusion, and the use of the trademark is indeed fair use. But they will have to consider that as a dimension of the dispute, where previously they ruled it was immaterial.
IANAL, and it's possible I've gotten some details wrong here, but IMO this is the right ruling. Just slapping a joke on an otherwise infringing product should not provide immunity from trademark claims.
Kind of read to your comment and didn't bother reading much further, the article is pretty clear when you look for it and the headline is wildly overstating the situation.
Really? I believe that if you put this product in front of 100 average Walmart shoppers (mixed in with other products, some officially-licensed, some not), and asked them which items were "officially licensed", they would likely mostly have believed this toy to be "officially licensed".
Even if someone, somewhere, somehow managed to assume that Jack Daniel's was the entity behind a cute dog toy it still wouldn't hurt them any. It feels like Jack Daniel's is doing far more harm to their own reputation than the dog toy ever would have. I know lawyers love insisting that companies must to defend their trademarks to the death and treat everything that could ever conceivably come close to infringing on a trademark like it were a deadly threat, and I'm sure Jack Daniel's would love to make this toy company pay them excessive licensing fees to keep the product on shelves, but this is just silly.
This is a strawman. Nobody is arguing that this loses Jack Daniels revenue, they're arguing that it waters down their IP and deprives them of the ability to monetize their brand image. Sheesh.
I disagree about the confusion.
1) Trying to answer the question "Is that dog toy sponsored by Jack Daniels?" suggests that there is plenty of confusion here. You have to look and read the toy in question to see that it's not actual Jack Daniel's merchandise.
2) Jack Daniel's must enforce it's trademark or it will lose it.
3) Jack Daniel's are some of the nicest people about enforcing their trademarks. See: https://brokenpianoforpresident.com/2012/07/19/jack-daniels-...
Of course when a decision comes down 9-0 from the Supreme Court, I have to assume I'm missing some understanding here.
But also, even if you were able to show the expert's study design was badly done and/or biased, there is another prong to trademark and that is dilution. When the brand is as famous as JD, they can argue that another company copying them is causing harm to their brand's reputation. Considering this dog toy product compared JD to dog shit, the court ruled that there definitely was dilution.
The last part is if the parody is directly related to the commercial aspect of the product. The defendant in this case admittedly used the parody brand as a trademark for themselves, and so the courts found it was indeed directly related to the business aspect.
However, naming a reasonably good character in your children's film "SPA'AM" is not considered trademark tarnishment[2].
[1]https://scholar.google.com/scholar_case?case=110145089733630...
[2]https://scholar.google.com/scholar_case?case=161886856728668...
I disagree with that, and so did the Supreme Court justices. Companies put out "side products" of their own all the time. Think about Tesla's flamethrower, or their tequila. I could easily imagine a liquor company putting out some good-natured pet products that imitated their primary brand.
If you study economics for any length of time you will realize the majority of human misery is driven by market power abuses restricting human ingenuity, pushing labor prices artificially, etc. Copyright, patent, and trademark explicitly increase market power substantially and so it is very dangerous to do what the supreme court did, as the fundamental test for these things should be "what is the minimum we can do to solve x?" where x is a problem like brand confusion, product safety, etc. What was done in this ruling was to push us even further from the minimum and it's a very bad thing for society.
I don't see any problem with this ruling whatsoever. It says nothing about parody for non-commercial purposes. The dog toy owner was specifically trying to leverage JD's brand for his own economic benefit. And it's not like a patent, where patent owners try to remove the ability to make something that sometimes isn't even that novel in the public sphere.
Slippery slope arguments are incredibly weak here if you look at the actual content of the ruling.
It's as if instead of the band AQUA releasing a song called "Barbie Girl", there had been a band called "Barbie Girl" which used the Barbie logo in all of their branding and album covers, and then tried to claim they were just a parody.
In general, appeals courts such as SCOTUS never decide on the facts of the case. They only determine whether a lower court "screwed up" somehow, and can reverse rulings or offer re-trials if so.
Relevant quotes from the article:
> But in a 9-0 decision, the justices said a precedent known as the Rogers test for assessing the use of trademarks in artistic expression did not apply to VIP's products, reversing a U.S. appeals court
> The Rogers test is "not appropriate when the accused infringer has used a trademark to designate the source of its own goods - in other words, has used a trademark as a trademark," Justice Elena Kagan wrote.
> The whiskey maker will still have to prove VIP's toys are likely to confuse potential customers into thinking it was affiliated with them in order to win its infringement case.
The new decision says that the Rogers Test should only be applied to things that are not in and of themselves trademarks. So, if someone is referencing the Pepsi logo in their movie, or in an advert, or in a painting they are selling, you should apply the Rogers Test to see if that is a violation of the trademark or not.
But if the Pepsi logo (or something that Pepsi claims is too similar to it) is the only one showing up on their beverage packaging, or on the shoes they're selling, or on a T-shirt and all of its labeling, even if that T-shirt is being given away at a charity event and is thus non-commercial - well, then they are using a trademark as a trademark, and now they can't rely on the Rogers test. Instead, they have to be judged on the buyer confusion standard (would a regular person believe they are getting an official Pepsi product when seeing this item, or not?).
The SCOTUS decision is all about shutting down the short-circuit that the lower court applied, now requiring them to go back and decide on the confusion question.
The Rogers Test comes from Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which asked whether an Italian film named “Ginger and Fred” infringed a trademark of famous film stars Ginger Rogers and Fred Astaire.
The alternative is called “nominative use”, which is to use the mark of another to refer to the other’s goods or services.
For example, a cola manufacturer can write in an advert, “Better than Coca-Cola!” and it does not infringe the Coca-Cola mark, because the name is being used to identify the competitor’s product. If the same company called its own product “Better Coca-Cola”, however, that would be using the trademark as a trademark and it could potentially infringe. (Probably would, in fact.)
> The Rogers test is "not appropriate when the accused infringer has used a trademark to designate the source of its own goods - in other words, has used a trademark as a trademark," Justice Elena Kagan wrote.
…
> VIP had conceded that it used "Bad Spaniels" as a trademark.
They then make a comparison to the song Barbie Girl (apparently also resulted in a lawsuit but with the opposite outcome), since that uses a trademark not as a trademark.
This all seems to be about specifically whether the Rogers Test[0] applies, with brand confusion questions still requiring proof later (probably by a lower court):
> The whiskey maker will still have to prove VIP's toys are likely to confuse potential customers into thinking it was affiliated with them in order to win its infringement case.
9-0 is a great clue that if the headline is confusing then maybe it's time to read the controlling opinion in the decision.
Branding has almost transcended physical products. Apple Computers and Apple Corps were allowed to exist in the same markets because computers are not music. However, the now Apple Inc is more than computers. It's software, phones, tablets, chip manufacturing, streaming, etc.
No, no one is going to confuse a dog toy with a bottle of Jack Daniel's. Just like no one would confuse a magnet, shirt, pin, or a plethora of merchandise with actual Jack Daniel's whiskey.
But the Brown-Forman Corporation licenses the likeness of the label and bottle to make all of those items and more. The logotype, the shape of the bottle, the colors, all serve to remind people of the core product. They want to evoke a certain feeling associated with that brand. And if a product with their branding is made to a poor standard, if a chew toy is made with material harmful to dogs, there is a chance that people will assume that Brown-Forman is responsible.
And they may want to actually make a Jack Daniel's themed chew toy. Or license their IP to someone to do it for them.
So basically, since brands aren't really tied to a singular product any more, the entire idea of "separate domains" is rendered effectively moot at this point.
Also, IP is the larger term. It encompasses trademark law, copyright, trade secrets, and others. Trademark is actually fairly strict, "fair use" doesn't apply, and parody is not a protection
On one hand, it is intentionally made to look like a Jack Daniels bottle... on the other hand it's not nearly the same product type and it won't interfere with product sales for actual Jack Daniels company.
If we look at other similar concepts, can an apple (=fruit, or juice or strudel, etc.) company use an image of an apple with a bite taken out? Or will apple get grounds to sue?
What’s relevant here is that the chance is illegally high that someone who looks at the general appearance of the dog toy but doesn’t take the time to read the actual words might think, “oh cool, Jack Daniels is releasing a dog toy!” rather than that another company is parodying Jack Daniels.
It’s exactly this kind of confusion which trademark law is meant to prevent. Even someone who reads the words on the toy might think, “oh cool, Jack Daniels has enough of a sense of humor to make fun of themselves on a dog toy.” It’s legitimately not obvious that the toy isn’t from them.
How would a casual observer distinguish that possibility from the true scenario, when the design was intentionally quite similar to the Jack Daniels design and a self-parody is not at all unlikely?
And if you accept that this isn’t easy to distinguish: if the third-party Bad Spaniels toy has some safety problem that causes dogs or small kids to suffer and requires a recall, wouldn’t that unjustly hurt the reputation of Jack Daniels for anyone who does get confused as to the origin of the product?
Makes sense to me that they’d care. This kind of thing is the whole point of trademark law.
Does this mean it is now illegal to make a red and white dildo and call it Cock-a-cola?
What if politicians start trademarking their names and faces and start suing people for talking shit?
If you look at the actual toy, it's just an exact replica of a Jack Daniels bottle with a few words changed. It doesn't make fun of Jack Daniels or drinking culture or anything at all.
I think if you start a business and trademark a slightly distorted version of their face for your business, yes, you’ll face problems.
The 1st amendment protections for being able to talk shit about a politician seem in no danger from this ruling.
I.e. this dog toy wasn't saying anything about Jack Daniels. It was just a dog toy that looked like a dog-poop themed bottle of Jack Daniels. If it was part of some general message of "Jack Daniels is dogshit", I believe that it'd have been unambiguously protected.
You can use someone else's trademarks in your parody, but only if that parody is branded differently (e.g. the Barbie Girl song was not branded using Barbie logos, it was using AQUA's logos).
I'm not a lawyer but I'm guessing yes.
Note that, as with somewhat related Dr. Seuss copyright cases [1], some of it relates to whether something is actually a satire/parody or whether you're just taking advantage of someone else's IP to sell something--even if it's a non-competitive something. As someone else noted, it's not clear that Weird Al's songs would in general be OK if he didn't license the source material.
[1] https://www.jdsupra.com/legalnews/who-s-who-dr-seuss-and-cop...
This is just taking the exact JD bottle shape and logo, changing a couple of words and making it a plush toy. A Weird Al song is an entirely new song, written and performed to the beat of the current song. The difference is a lot of hours of time and creativity.
> You're supposed to be able to use and reference trademarks as long as it can't be confused as the original.
Songs can't be trademarked, so this isn't a relevant comparison in any case.
> What if politicians start trademarking their names and faces and start suing people for talking shit?
Again, you generally cannot trademark your likeness. There are exceptions for its commercial use, but the ability to "talk shit" about politicians is highly protected.
Dogebrau Anarchist IPA isn’t half bad compared to the expensive alternative.
Was the dog toy a joke? Making a joke out of something popular is an allowed exception to trademark.
The ruling seems to say that it wasn't a joke and therefore not covered under the exception.
I get both sides of the argument. A physical product you're selling that has a clear non-parody purpose should have a higher bar to be regarded as parody.
A more difficult example might be a t-shirt with a Google logo on it that has something "funny" about Google written below.
I think a more exact comparison would be, say, a t-shirt with a fluffy Google logo and the text changed to say "Poodle". It's not really saying anything about Google, it's just using Google-related imagery mashed up with dog-related imagery.
The example I like (even though Weird Al seeks permission and so doesn't need his fair use rights) is Weird Al's "Smells Like Nirvana" versus "Fat".
Smells Like Nirvana is necessarily about Smells Like Teen Spirit and Nirvana's video for that song. It has lyrics like "We're so loud and incoherent / Boy this oughta bug your parents". If you make that song using Dolly Parton's "9 to 5" as the basic structure, now it's just nonsense. I believe the parody exception would apply to "Smells Like Nirvana".
"Fat" isn't about Bad or Michael Jackson. Jackson wasn't fat, the character he's portraying isn't fat, the song isn't about food, there's no connection. It's just funny lyrics to the same structure. If you do this to Bon Jovi's "Living' On a Prayer" that's funny too, a few people have done so, "Standin' On a Chair" for example. If you did that and get wealthy, expect Bon Jovi's label to demand most of it, parody rules don't help you.
With the T-shirt that says "Poodle" like a Google logo, you don't need their style. You could use the Ford logo, or the McDonalds logo, or a dozen others, doubtless you'd say you wanted a double-O - does Moodle (a VLE) have a logo? I bet they do. If you wanted Google's logo 'cos it's recognisable that is not a protected reason.
As I understand it this Supreme Court decision was pretty narrow, and doesn't get into the parody question anyway.