Can The Parody Defense Protect Against Trademark Infringement When The Use Is Commercial In Nature?

Not every unauthorized use of a trademark is infringing, one such example is when a mark is used as a parody. Generally, parody is an imitation of another done for comic relief or to ridicule. However, trademark owners that have invested time and resources building their brands may not be so amused, particularly when such use is commercial in nature. Courts have struggled with whether and to what degree parody should be protected as speech when used for pecuniary gain. Luckily, the Supreme Court is expected to provide us with firm guidance to be applied in such cases.

When it comes to presenting a parody defense, perhaps the most important consideration to keep in mind is that the purpose of trademark law is to avoid confusion as to the source of goods or services. As such, if a consumer would not be confused that the goods in question are in fact not affiliated with the trademark owner, there is no infringement. However, just because use is considered a parody, that is not an absolute defense to a claim of trademark infringement, as “there are confusing parodies and non-confusing parodies” and both “attempt at humor through the use of someone else’s trademark.”¹

Parody is awkward to discuss in terms of a trademark infringement because, as courts have consistently recognized, “[a] parody must convey two simultaneous – and contradictory – messages: that it is the original, but that it is not the original and is instead a parody.”² Thus, by its very nature, a parody is meant to pass off as originating with the trademark owner, but then must simultaneously differentiate from the original as to not cause consumer confusion. Typically, such differentiation is managed through an element of satire, ridicule, joke, mockery, or irreverent commentary. As such, an effective parody will draw the trademark owner or its brand to mind only enough to allow consumers to appreciate the message of the parody.

Another critical consideration is the implication of First Amendment rights in a case dealing with parody. As such, courts have been tasked with finding the appropriate balance between the rights of trademark owners on the one hand, and protecting free speech on the other. Applying the Rogers test, if the use (1) has any artistic relevance, and (2) does not explicitly mislead as to source, then it is protected speech under the First Amendment, and will not constitute trademark infringement.³ The primary question that courts have faced in parody cases is whether this heightened standard of protection should be available to commercial uses?

The Supreme Court is expected to provide us with clarity, as it heard oral argument in March regarding VIP Products’ use of Jack Daniel’s trade dress in connection with its dog chew toy featuring the name “Bad Spaniels”:⁴

VIP offers the toy as part of its “Silly Squeakers” line which consists of dog chew toys shaped like liquor bottles with parody names such as Heini Sniff’n (Heineken), BarkParty (Bacardi), and Doggie Walker (Johnnie Walker).

By way of background, the District Court refused to apply the Rogers test to commercial use and held that despite the parody, VIP’s use constituted trademark infringement after applying the likelihood of confusion factors.⁵ Disagreeing with the district court, the Ninth Circuit held that while the dog toy was “surely not the equivalent of the Mona Lisa,” its humorous message was sufficient expressive content to be protected under the First Amendment.⁶ Moreover, the court held that expressive content is “not rendered non-expressive simply because [the product] is sold commercially.”⁷ As such, the Ninth Circuit held that Jack Daniel’s trademark dilution claim failed and remanded the case for the application of the Rogers test to determine whether VIP’s use constituted trademark infringement.

The issue before the Supreme Court is whether a parody of a trademark owner’s mark on a commercial product should receive the heightened protection under the First Amendment or should simply be subject to the likelihood of confusion standard under the Lanham Act. Following oral arguments, it is not clear where the Supreme Court will land but there is no doubt the outcome will have a major impact on the trademark landscape.

Several major brand owners filed briefs in support of Jack Daniel’s, including Nike and Levi Strauss & Co., while VIP is joined by groups including law professors, First Amendment advocates, and artists.

The Supreme Court is expected to rule late this term and perhaps will give us clear guidance regarding the applicability of the Rogers test in parody cases involving commercial use.