WASHINGTON — The Supreme Court’s oral arguments Wednesday will focus on a shot of potty humor from a dog toy company, and whether the well-known distillery it spoofs can scoop the product out of the market.
The maker of Jack Daniel’s Tennessee Whiskey wants the justices to throw out a lower court ruling that would allow a dog toy company, VIP Products, to keep making the “Bad Spaniels” line of chew toys based on the distillery’s bottle.
What the justices decide could go far beyond dog toys, implicating how brands can control their depiction in books, movies and on TV in the absence of congressional action — and plenty of industries and artists have weighed in on the case.
The toy company argues that its design, replete with send-ups like subbing “Old No. 7” with “the Old No. 2, on your Tennessee Carpet,” are covered by free-speech protections of the First Amendment. The U.S. Court of Appeals for the 9th Circuit agreed in 2020.
But Jack Daniel’s wants to toss that decision as well as a separate 1989 case it was based on, known as Rogers v. Grimaldi, in which the U.S. Court of Appeals for the 2nd Circuit set a higher standard for trademark infringement for expressive works like movies.
“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,” the company’s brief said.
VIP Products told the justices there was no evidence that any consumers were confused about their parody of the whiskey bottle, and tossing what’s become known as the “Rogers test” would only make it easier for famous brands and individuals to tamp down on jokes at their expense.
“Our somber world needs more speech and more laughter; the Rogers test keeps it from growing any darker,” the company’s brief said.
The whiskey company’s push to toss the “Rogers test” has drawn out major supporters in both major political parties, the brewing and distilling industry, Levi Strauss & Co., Nike and even the Biden administration.
The Biden administration argued in a brief that the likelihood-of-confusion standard of the Lanham Act, which governs trademark law, is broad enough to cover parodies and oblique references in media.
“The First Amendment does not confer any right to use another person’s trademark, or a confusingly similar mark, as a source identifier for goods sold in commerce,” the government said.
The Biden administration was also granted permission by the justices to participate in Wednesday’s oral arguments.
On the other side are authors, novelty T-shirt makers and the movie industry, who brought a more doom-and-gloom perspective.
The Motion Picture Association told the justices in a brief that getting rid of the Rogers test could mean the end of McDonald’s references in movies like “Pulp Fiction” or the raunchy animated show “Rick and Morty,” or even name-dropping Rolex in “Glengarry Glen Ross.”
Hold the dog toy company liable because they made a commercial product, the MPA said, but don’t touch the movies. “For artists, overruling Rogers would upend decades of law. For Jack Daniel’s, which produces liquor rather than art, the Rogers test may appear expendable,” the brief said.
Rebecca Tushnet, a Harvard law professor specializing in First Amendment law, said getting rid of the Rogers test would be “a threat to anyone who publishes anything” and would give major brands an incentive to sue any time their products are portrayed negatively.
“If you want movie villains to wear completely blurred out clothes and move around in a cloud, then that’s where you are without Rogers,” Tushnet said.
It’s also not as straightforward as the MPA made it seem, Tushnet said. When they tried to distinguish the dog toy as a commercial product separate from their movies, she said they neglected to mention things like DVDs or merchandise they sell as well.
How the Supreme Court handles the Rogers test could have wide-ranging implications, according to Mark Perry, the co-head of the appeals and strategic counseling practice at Weil, Gotshal & Manges LLP. Perry noted that the justices could look at the fact that the dog toy in question was a parody and avoid the larger questions of the Rogers test.
“We have an incrementalist court, for the most part, and the question is how much do they want to take on in this case? There are ways to decide the case without going right at Rogers,” he said.
The Supreme Court has never weighed in on the Rogers test specifically, and neither has Congress, which left both sides to speculate about what Congress may have meant when it passed the original trademark law.
The MPA cited a House Judiciary Committee report on a 2020 update to trademark law that endorsed the Rogers test, arguing that it has “become integral” to trademarks. However, the text of the statute was silent on the test.
Jack Daniel’s told the justices that Congress already weighed in on the exceptions to trademark violations for fair uses like parody, criticism and commentary. The Rogers test would “privilege the purported First Amendment interests of some speakers over others, contrary to the constitutional balance Congress already struck,” the company’s brief said.
The Supreme Court will likely decide the case before the end of its term in June.
