supreme court roundup #2: parodic trademarks
bad dog!
Welcome back to day 2 of my Supreme Court roundup! Yesterday, I talked about how the decision limiting the availability of the “fair use” defense in copyright infringement lawsuits will likely be bad for art but good for artists. Today, I’m tackling another intellectual property domain—trademark. Specifically, the trademark case pitting a parodic dog toy against a famous whiskery manufacturer.
As a reminder, these roundups are not, and are not intended, to be full summaries—if you want that, go to SCOTUSblog—but are rather highlights that I find interesting and which implicate broader societal questions. I am not a “Supreme Court expert.” I am just a girl with a JD who teaches a course on intellectual property, has read a fair number of Supreme Court decisions, and likes thinking about the world we live in.
Background
If you have pets, you probably loooove buying stuff for them. Especially toys resembling objects for humans—there’s just something so cute about giving your cat their own laptop as if they had an office job or treating your dog to a “luxury” handbag that looks like your own.
One manufacturer of pet toys, VIP Products, noticed this peculiar love and released a line of dog toys, including:
Jack Daniel’s took issue with this parody of their brand and bottle—and in true American fashion, sued. VIP Products countered that the Bad Spaniels dog toy, as a parody of a Jack Daniel’s bottle, was “expression” warranting heightened First Amendment protection. Can’t a dog toy be both fun for your pup and free speech?
In a unanimous decision, the Supreme Court found that the Bad Spaniels chew toy was trademark infringement, plain and simple, and would not receive special consideration under the First Amendment.1 Because Bad Spaniels was used as a designator of source—as a trademark—VIP Products’ use fell squarely within trademark law and did not implicate First Amendment law. It didn’t matter that it was intended to be a parody. When a trademark, even a parodic one, is used as a source designator, it doesn’t receive special free speech considerations.
For comparison, the Court brought up Aqua’s iconic song, “Barbie Girl.”2 (Totally unrelated to the inescapable Barbie movie campaign.) When the song came out, Mattel did sue Aqua (well, Aqua’s record label) for trademark infringement, but the Ninth Circuit found that “Barbie” wasn’t used by Aqua to identify a source. No one, the Ninth Circuit reasoned, would think that Mattel was the originator of “Barbie Girl” the song. “Barbie” was used in the song as a product to communicate an idea in the song—not to identify the source of the song.
Before we get to the implications, one note about the significance of the case: the decision does not mean that the Bad Spaniels toy infringed Jack Daniel’s trademark. The question considered by the Court was confined to whether heightened protection under the First Amendment was warranted before conducting the trademark infringement analysis. Because the answer was no, the trial court will now have to engage in traditional trademark infringement analysis and decide what the likelihood of confusion is between the two marks. If consumers are likely to think that Jack Daniel’s manufactured the Bad Spaniels dog toy, then VIP Products will have infringed Jack Daniel’s mark.
Musings
This is a fun one for me to think about, because it begs a grander question than just trademark: What is “good art,” art that we want to encourage and incentivize legally, in the brand-as-meaning environment of late-stage capitalism?
Like it or not, brands not only communicate source nowadays but also a lifestyle, an expression, a self-identification. There’s a reason that old money aesthetic, cottagecore, and pink Pilates princess evoke very specific images on our FYPs (and in our heads). Wearing Chanel says something about you while wearing Off-White says something else. It just does.
This brand identification makes parody both easier and harder. Easier, because when brands can serve as stand-ins for long descriptors—”Lululemon mom” instead of “upper-middle class suburban mom who drives an SUV and goes to boutique spin and barre fitness classes”—we can get to the punchline quicker and more effectively. We can communicate more efficiently. But also harder, because a parody that doesn’t “land” with the audience will be accused of riding the brand’s coattails. (And I don’t know about you, but I never really know if my jokes will land ahead of time—that’s kind of the beauty and horror of stand-up, no?)
And with the Jack Daniel’s decision, the Supreme Court lobs another potential pitfall at brand parodies—legal liability. VIP Products clearly delighted in taking well-known trademarks and turning them into dog versions—Dos Perros (Dos Equis); Smella Arpaw (Stella Artois); and Doggie Walker (Johnnie Walker), to name a few. It’s fun; it’s cute; but it also requires consumer familiarity with the original brands to be effective. Is that innovation or clout-chasing?
I also wonder whether the Barbie Girl case would still be decided the same way in 2023. In 1997, the year that Mattel filed suit, brands rarely sought to expand into new industries. Back then, Barbie wasn’t everything. Barbie was just a doll. Mattel only launched its in-house entertainment division in 2001, distributing its first animated Barbie movie that same year.
Now, every brand is expanding into every industry. Barbie is everything. (Like, everything.) So is Supreme. So is your favorite or least favorite influencer. When I hear about a movie with the name “Barbie” in it, I automatically assume that Mattel is involved. So why wouldn’t a song titled “Barbie Girl” also signal the same origin as the Barbie doll? After all, “Barbie” is in the title—it’s not like Barbies were only used as actors in a film titled Superstar: The Karen Carpenter Story.
We’re entering a new era for brands, where brands transcend simply being source identifiers of one product line. Trademark isn’t art, but trademarks are certainly used in art. The Supreme Court appeared to draw a clear distinction between “Barbie Girl” as art (and not a source identifier) and Bad Spaniels as not-art (and very much a source identifier), but I don’t really know… seems sus. ◆
What do you think about the Bad Spaniels dog toy? Should it have received heightened First Amendment protections? Do you think that referencing brands is “expression” nowadays? Let me know in the comments!
599 U.S. ____, 10 (2023).
Id. at 11.