Macarons shaped like the poop emoji with smiley faces on them.
Chocolate banana poo emoji macaroons. | Steve Russell/Toronto Star via Getty Images

A case about a silly, poop-themed dog toy is also a case about free speech and judicial humility.

The Supreme Court will take a break on Wednesday from the unusually political mix of cases it decided to hear during its current term, to consider a case about poop jokes.

Jack Daniel’s v. VIP Products asks whether VIP Products, the nation’s second-largest maker of dog toys, infringed upon the whiskey maker’s trademarked bottle shape and label when it sold dog toys that resemble a bottle of Jack Daniel’s. The dog toy, named “Bad Spaniels,” juxtaposes imagery drawn from the whiskey maker’s trademarks with a gag about a dog dropping “the old No. 2 on your Tennessee carpet.”

Jack Daniel’s seeks a court order prohibiting VIP from continuing to sell this toy.

A side-by-side photo of a Jack Daniels whiskey bottle and a dog toy in the shape of the bottle, featuring similar design elements.
Petitioner’s brief in Jack Daniel’s v. VIP Products

Jack Daniel’s is, on the surface, a very silly case, which prompted some very silly attempts by the whiskey maker’s lawyers to explain why their client is so offended by this dog toy. Sample quote from their brief: “Jack Daniel’s loves dogs and appreciates a good joke as much as anyone. But Jack Daniel’s likes its customers even more, and doesn’t want them confused or associating its fine whiskey with dog poop.”

Lurking below the surface, however, are very serious questions about the First Amendment. And about how far courts should go in second-guessing Congress’s decisions about how to balance the needs of the marketplace with the demands of free speech. VIP has strong legal arguments that it should prevail in this case, but Jack Daniel’s also raises strong claims that the lower courts did too much to undermine federal trademark law.

Trademark law — that is, the body of law giving companies an exclusive right to use the imagery associated with their brand to market their products — necessarily limits free speech. Only McDonald’s, for example, may use its trademarked golden arches to sell hamburgers, and only Nike may use its trademarked swoosh simply to sell shoes — which creates a risk that companies may sometimes go overboard in filing lawsuits seeking to protect their trademarks.

And yet, we give companies like McDonald’s or Nike a monopoly over such commercial uses of their trademarks because the marketplace would function less reliably if consumers cannot readily identify which products are genuine Big Macs or Air Jordans, and which ones are knockoffs.

Additionally, the Court explained in Park ’N Fly v. Dollar Park and Fly (1985) that “trademarks foster competition and the maintenance of quality by securing to the producer the benefits of good reputation.” Because Pepsi, and only Pepsi, can use its distinctive labeling to market its products, Pepsi has a clear incentive to ensure that any beverage that uses that labeling will be high quality — because, if the quality suffers, consumers will know not to buy anything that uses Pepsi’s trademarked red, white, and blue label.

The specific legal questions that arise out of the Jack Daniel’s case are difficult, in part because federal trademark law sometimes permits companies to sell products that parody a famous trademark. But the federal appeals court that heard this case largely bypassed the hard questions that arise under federal statutes, and instead held that the First Amendment places strict limits on a company’s ability to protect its own trademarks.

Federal trademark law, however, already strikes a careful balance between the demands of the First Amendment and the benefits all of society gains from allowing companies to clearly and consistently brand their products. And it is far from clear why the appeals court should be allowed to upset that balance.

The Lanham Act, briefly explained

Jack Daniel’s argues that the Bad Spaniels dog toy violates the Lanham Act, the primary federal law governing trademarks, in two ways. The dog toy allegedly “infringed” Jack Daniel’s trademarks by using imagery that consumers would associate with the whiskey maker and not with pet products. And it allegedly “diluted” Jack Daniel’s trademarks by “associating them with dog poop” and other imagery that the whiskey maker does not want consumers to think about when they see a bottle of Jack Daniel’s.

A trademark owner will prevail in an infringement claim if they can show that some other party used their trademarked imagery in a way that “is likely to cause confusion” about whether a particular product is being sold by the trademark owner. Imagine, for example, a soda manufacturer that sells “Popsi” cola, and that markets it in red, white, and blue cans similar to Pepsi’s branding. Pepsi would almost certainly prevail in a trademark infringement suit against the makers of Popsi because consumers could very easily mistake this newcomer cola for the more venerable brand.

Similarly, the classic Eddie Murphy comedy Coming to America features a straightforward case of trademark infringement.

Dilution suits, by contrast, allow the owners of a “famous” trademark to prevent its imagery from being used in ways that might cause “tarnishment” of their brand. This is the core of Jack Daniel’s complaint that it does not want consumers “associating its fine whiskey with dog poop.”

These twin protections against infringement and dilution exist to protect the benefits trademarks provide to all consumers. If a trademark can be too easily infringed, then consumers may have no way of knowing which products are actually made by Jack Daniel’s (or any other company), and which ones are potentially inferior knockoffs. And, if trademarks can be too easily diluted, then companies may lose their incentive to ensure that their branding is only associated with high-quality products.

After all, why go to the trouble and expense of making a tasty and consistent product if consumers are just going to associate your product with dog poop?

Yet, while the Lanham Act provides robust protections for trademark owners, it also recognizes that there will be some instances where the First Amendment should trump a company’s desire to control its branding and keep it free of negative associations. A leftist political organization, for example, may want to incorporate several famous corporate logos into a pamphlet criticizing capitalism. Or a journalist may want to use an image of McDonald’s golden arches in a hypothetical newspaper article that reveals embarrassing information about McDonald’s labor practices.

This kind of political speech is at the heart of the First Amendment, and has historically been given the highest level of constitutional protection.

Accordingly, the Lanham Act contains several provisions ensuring that companies cannot wield their trademarks as weapons to cut down essential speech. The law, for example, explicitly forbids companies from bringing dilution suits against “all forms of news reporting and news commentary” and against “any noncommercial” use of a trademark — thus protecting journalists and anti-corporate activists. In some cases, the Lanham Act also protects speech “parodying” a company or its products from dilution suits.

Similarly, courts have long understood that parodies of famous trademarks enjoy some protection against infringement suits because most consumers are smart enough to tell the difference between an authentic product and a joke seeking to mock or ridicule that product. As one consumer said in Louis Vuitton Malletier SA v. Haute Diggity Dog (2006), a lower court case that is strikingly similar to Jack Daniel’s and which involved dog toys made to look like handbags, “if I really thought that a $10 dog toy made out of fluff and stuff was an actual Louis Vuitton product, [then] I would be stupid.”

The makers of Bad Spaniels, in other words, have strong legal arguments that they did not violate the Lanham Act. The dog toy is clearly a parody. And is anyone really going to confuse a poop-themed dog toy with an actual bottle of whiskey?

That said, Jack Daniel’s does have a stronger trademark dilution claim than Louis Vuitton did in its case, which involved dog toys marked with the words “Chewy Vuiton” and which didn’t associate Louis Vuitton’s brand with feces.

Unfortunately, however, the lower court that decided the Jack Daniel’s case bypassed these legal arguments, instead ruling that the First Amendment provides such extraordinary protections to companies like VIP Products that trademark law could cease to function effectively.

The lower court made it “nearly impossible” for trademark owners to enforce their trademarks

The United States Court of Appeals for the Ninth Circuit, which heard the Jack Daniel’s case before it reached the Supreme Court, applied an unusually expansive reading of the First Amendment. Under the Ninth Circuit’s decision, when a work that infringes upon a trademark engages in “artistic expression,” then a trademark owner’s attempt to enforce the Lanham Act will nearly always fail.

As one federal judge explained, this approach is so protective of the free speech rights of trademark infringers that “it appears nearly impossible for any trademark holder to prevail.”

One reason why is, as Jack Daniel’s argues in its brief, “all trademark uses are expressive, by owners and infringers alike.” The whole point of a trademark is to associate a particular product with the company’s efforts to market that product, and with whatever reputation that product has earned in the marketplace. Similarly, the whole point of infringing a trademark is to try to falsely convey to consumers that the infringing product is just like the properly trademarked product.

In any event, Congress struck a perfectly sensible balance between the advantages society as a whole gains from protecting trademarks and the demands of free speech when it wrote the Lanham Act. As explained above, the law protects the very sort of political and other noncommercial speech that enjoys special protection under the First Amendment.

There’s also one other reason to prefer the balance struck in the Lanham Act to the one struck by the Ninth Circuit. The Lanham Act was enacted by the people’s representatives in Congress assembled. The Ninth Circuit’s decision, by contrast, is the product of a few lawyers in black robes.

Again, under the legal rules laid out in the Lanham Act, VIP Products has strong arguments that it sells innocent, obvious parodies that do not violate federal trademark law. They can potentially win this case without having to upend decades of law establishing that free speech and trademarks can coexist. The Ninth Circuit’s rule, by contrast, could eviscerate the very real benefits that society derives from trademark law.

As the Supreme Court said nearly 150 years ago, “the right to adopt and use a symbol or a device to distinguish the goods or property made or sold by the person whose mark it is, to the exclusion of use by all other persons, has been long recognized by the common law and the chancery courts of England and of this country.” The United States has a long history of protecting both trademark rights and free speech. It’s unlikely that a bunch of unelected judges will come up with a better way of protecting both of these important interests than the Lanham Act.

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Author: Ian Millhiser

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