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Comment by gms7777 | Hacker News Reader

The thing that confuses me (as someone that knows very little about the topic) is that I thought the primary purpose of trademark law is to avoid consumer confusion (as opposed to copyright which is about IP, which I actually could see protecting logos and other brand designs in cases like these). If I look at that dog toy, I understand that it's clearly referencing JD, but it also seems obviously evidently clear that it's not JD, nor do I think people would assume it was produced by JD.

Of course when a decision comes down 9-0 from the Supreme Court, I have to assume I'm missing some understanding here.

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Reading the article, I believe the SCOTUS decision is not making any claim whether the toy violates JD's trademark. Rather, they are deciding that the lower court's ruling that it did not violate was invalid because that court applied a rule that it shouldn't have. So it will probably be re-tried without that rule applied, and a jury (or judge or whoever) will then decide whether it violates under that revised understanding of the law. The argument you're making would be relevant to that trial, not the appeal that SCOTUS just ruled on.

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.

Thanks, this helps clarify it a lot. I went and looked up a few more articles, and I think I still remain confused a bit about the second quote you list -- specifically what it means to use "a trademark as a trademark", as it seems like the decision written by Justice Kagan hinges on this concept.

The term "trademark" is literally a "mark" (identifying symbol) for "trade" (commercial purposes). Kagan's quote is basically saying that the Roger's test only applies when you're using trademarks for noncommercial purposes.

It's not about non-commercial purposes. "Barbie Girl", the song that actually created the Rogers Test to begin with, is definitely a commercial product.

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?).

To build on your Pepsi example: I could probably sell a chew toy that looked like a bottle of Pepsi with my "Pupsi" look-alike logo and the Rogers Test could be applied, but if I trademarked (officially or via branding) the Pupsi name and infringing logo by say, selling a line of Pupsi-branded pet supplies, it would not. Pepsi would then be able to pursue the "consumer confusion" argument that most people think of in IP/trademark disputes.

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.

> “Barbie Girl”, the song that actually created the Rogers Test to begin with

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.

https://en.m.wikipedia.org/wiki/Rogers_v._Grimaldi

Ooops, I misunderstood something in TFA and didn't check myself further... Thanks for correcting me!

> what it means to use "a trademark as a trademark"

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.)

Well, there were two points about that on this case. The first was that JD hired an expert to do a blind study on whether there would be potential confusion (and that's what you have to show, potential not necessarily actual) and found that, despite what one might think, it showed there could indeed be confusion.

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.

I think you mean trademark tarnishment instead of dilution. The act of associating a trademarked product with something distasteful or disagreeable is considered a tortious offense called tarnishment. Tarnishment is when you use a Dallas Cowboy's cheerleader outfit in an adult film[1]. The filmmakers argued it was parody, but the judges didn't think the adult film was comedic.

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...

> If I look at that dog toy, I understand that it's clearly referencing JD, but it also seems obviously evidently clear that it's not JD, nor do I think people would assume it was produced by JD

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.

The Supreme Court made no such ruling. They ruled that the parody should not be considered protected under 1st amendment free speech grounds. They sent it back to the lower courts for a ruling on if it violated copyright under consumer confusion grounds.

So we should sue all glass manufacturers to stop them from putting out windows in case Microsoft decides to get into that side business? I am of course joking, but that's the problem with protecting side products, especially in likeness vs actual logo situations (again,just think of all the manufacturers of crappy, leaky, easily breakable windows that need to be upgraded prematurely, that would have to shut down).

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.

Your example is so absurd I feel it hardly warrants comment. If a window manufacturer puts out windows with the MS windows logo, and when you open it it makes the XP startup sound, then yes, I think it would be infringing. But nobody thinks a plain window would be confused with MS Windows.

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 also says nothing about parody for commercial purposes. It just says that you can't claim parody as a defense of your own trademark. If the dog toys had had some specific trademark of the original company, but then also some parody of Jack Daniels bottles on them, the ruling may well have agreed that they are protected under the parody exceptions. The problem was not that they were profitting off of their parody, but that they used the parody itself as their only trademark.

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.

There is no 'non-commercial' requirement for protection of parody, thank god.

Costco has sold dog toy Kirkland liquor bottles with easy dog puns.

I don’t fully follow this, but this seems to be the crux of the ruling:

…

> 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.

[0]: https://en.m.wikipedia.org/wiki/Rogers_v._Grimaldi

So the SCOTUS didn't rule that it did or did not violate the trademark. They ruled that there wasn't a direct first amendment protection for it and that it needs to go back to the lower courts to be adjudicated. Basically the case can't be dismissed outright based on first amendment precedent/law.

What you're missing is "branding" in general.

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

> Of course when a decision comes down 9-0 from the Supreme Court, I have to assume I'm missing some understanding here.

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.

The question about consumer confusion is what gets figured out in the lawsuit. My understanding is that the Supreme Court ruling was about whether or not that lawsuit is allowed to go forward, NOT the actual outcome of the lawsuit.

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