United States Supreme Court’s dog toy judgment puts parody items on notification

By Blake Brittain

(Reuters) – The U.S. Supreme Court handed brand name owners a win versus parody items on Thursday when it ruled that “Bad Spaniels” dog toys looking like Jack Daniel’s scotch bottles are not protected by the U.S. Constitution from the alcohol maker’s hallmark claim.

The choice is most likely to require business to toe a more cautious line when making business items that simulate other brand names for the sake of parody, legal professionals said.

VIP Products had actually argued that the First Amendment secured its toys’ poop-themed variations on Jack Daniel’s well-known label and bottle style, which it referred to as commentary on alcohol brand names’ “self-serious barrage of customers with marketing” and dog owners’ “cheerful humanization of their family pets.”

But in a 9-0 choice, the justices said a precedent referred to as the Rogers test for evaluating using hallmarks in creative expression did not use to VIP’s items, reversing a U.S. appeals court and raising the bar for parodies to make it through hallmark claims.

The Rogers test is “not suitable when the implicated infringer has actually utilized a hallmark to designate the source of its own products – to put it simply, has actually utilized a hallmark as a hallmark,” Justice Elena Kagan composed.

Kagan contrasted the case with circumstances where she said using the Rogers test was warranted, consisting of when Danish pop group Aqua’s label MCA Records beat a hallmark claim by Mattel over the band’s tune “Barbie Girl.”

“On the one hand, this is a triumph for artists,” said Megan Bannigan, a partner at Debevoise & Plimpton. Bannigan said the choice is “likewise a triumph for brand names” since it clarifies that the Rogers test does not use when branding is being utilized as a normal hallmark to recognize a source of products without approval.

VIP had actually yielded that it utilized “Bad Spaniels” as a hallmark. But the high court supplied little assistance on where to fix a limit in between a hallmark usage and a non-trademark usage that might be based on the Rogers test, Bannigan said.

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Doug Masters, a partner at Loeb & Loeb, said the choice recommended parody items implicated of violation might not have the ability to depend on the Rogers test if they are “planned to be a business item, even if there’s some expression beyond simply the commerce part of it.”

Masters said the choice might require business that wish to participate in parodies to ink licensing deals or discover methods “to be more imaginative” and less comparable to the brand names they reference.

Other professionals said the choice leaves space for the First Amendment to use to parody items.

Alexandra Roberts, a law teacher at Northeastern University, pointed out a “Chick-Fil-Hate” tee shirt as an example of a parody item that might still receive First Amendment defense since it communicates a message about Chick-fil-A and does not utilize “Chick-Fil-Hate” as a hallmark.

The t-shirt describes lunch counter Chick-fil-A’s previous contributions to Christian groups that opposed same-sex marital relationship.

“If Chik-Fil-Hate were likewise on the within the t-shirt on the tag, that would be more of a hallmark usage,” Roberts said.

Elizabeth Brannen, a partner at Stris & Maher, said Jack Daniel’s success “might end up being pyrrhic.” The scotch maker will still need to show VIP’s toys are most likely to puzzle possible clients into believing it was associated with them in order to win its violation case.

“The possibility of confusion analysis will still take the challenged item’s amusing message into account,” Brannen said. She kept in mind that the high court said customers are “not so most likely to believe that the maker of a buffooned item is itself doing the mocking.”

(Reporting by Blake Brittain in Washington)