A trademark dispute between a liquor company and a maker of novelty dog toys may not sound like an important First Amendment battleground, but the latest trademark case to come before the U.S. Supreme Court could have serious consequences for online speech and political activism. Trademarks are part of our modern lexicon, and we cannot allow their owners to use the law as a censorship tool.
In Jack Daniel’s Properties v. VIP Products, Jack Daniels claims that a company infringed and diluted its trademarks by selling a parody dog toy that looks like a Jack Daniels whiskey bottle and has punny text like “BAD SPANIELS – 43% POO BY VOL.” The Ninth Circuit held that the defendant’s use of Jack Daniels’s trademarks was “expressive,” requiring application of what’s known as the Rogers test. Jack Daniels is now asking the Supreme Court to take the extreme position that no special test should apply to expressive uses of trademarks at all, essentially arguing that there’s no need to consider whether forbidding a trademark use would deprive someone of their First Amendment rights. We filed an amicus brief urging the Court to reject that argument, explaining why and how the law must protect our ability to use trademarks to critique and comment on their owners and the things they represent.
In most trademark cases, courts apply a set of six to ten factors meant to assess the likelihood that consumers will be confused—things like how well-known the plaintiff’s trademark is and how similar the plaintiff’s and defendant’s uses are. That’s consistent with the consumer protection purpose of trademark law: trademarks provide information about goods and services, so the law polices their use to prevent people from thinking they’re buying one thing but actually getting another.
But there are a few problems with applying this standard test to parodies or other expressive uses of trademarks—i.e., cases where a trademark is being used to communicate something other than the source of a product. First, the test treats avoiding confusion as the only goal, without recognizing a competing interest in free expression. Second, certain factors may be unhelpful or awkward to apply to expressive uses, or lead to counterintuitive results. And third, the many subjective factors make the outcome unpredictable and difficult to resolve early in the case, which translates to uncertainty about your legal rights and expensive litigation.
The Rogers test was developed by the courts in recognition that expressive uses of trademarks require extra free speech protections. Instead of applying the usual set of factors, the test asks just two questions: Was the use of the plaintiff’s trademark artistically relevant to the defendant’s expressive work? And did the use explicitly mislead consumers about the work’s source or content? This streamlined test gives due consideration to trademarks’ expressive value, is easy to apply, and helps get rid of bad cases early.
In addition to explaining these advantages of the Rogers test, EFF’s brief educates the Court about the role of trademarks in modern political activism. Trademarks are ubiquitous in the modern world, and the same attributes that make them useful for identifying the source of goods or services also make them a powerful expressive tool for commenting on their owners and society. Think of every SNL parody or Onion article you’ve ever seen. The use of the actual name and look of the company being critiqued makes the comments hit harder. Because it’s creative and funny, you’re more likely to remember that issue when you next encounter the company.
Our brief focuses in particular on an activism technique called “identity correction,” a form of parody involves pretending to speak for a company or organization in a way that exposes hypocrisy or a failure to take responsibility for their actions. EFF frequently provides legal help to activists using identity correction, and the Rogers test is a key shield against the trademark owner’s sword.
Discarding the Rogers test would threaten far more than the parody dog toy market; it would eliminate an important protection for a wide range of political and artistic expression. We hope the Supreme Court will recognize that and affirm the Ninth Circuit’s judgment.