“It will be interesting to see if the Supreme Court ultimately provides any standards on the parameters of what is, or is not, properly a parody under First Amendment principles, as the Circuits could really use some guidance on this point.”
Following the Supreme Court oral arguments in Jack Daniel’s Properties, Inc. v. VIP Products LLC last week, I was reminded of an article I penned years ago for Cardozo Arts & Entertainment Law Journal exploring the boundaries of parodies when up against allegations of trademark infringement and dilution.
That article observed:
Many of the trademark parody cases do not spend time analyzing what a parody is. Rather, the sheer majority of cases assume that any attempt at humor while using another’s trademark is presumptively a parody.
It noted that in the face of the essentially blanket parody exception contained in the TDRA, “courts may more heavily weigh the threshold parody question.”
That piece surveyed the existing case law to review possible threshold parameters contained in various definitions of the term parody that federal courts may use to determine whether a parodist’s proposed parody should receive protection, producing the following chart:
The article posited a possible multi-factor definition gleaned from the authority to determine when parody protections should trigger:
Putting together the case law definitions, if one were to flesh out a strict criteria-based definition of parody, one might wind up with a definition of a parody that demands a (1) literary or artistic work (2) that seeks to comment upon or criticize another work (3) by appropriating or mimicking elements of the original work, in order to (4) create a new art work that makes ridiculous the style and expression of the original (5) in a humorous fashion.
It then posed the following questions to guide the application of such a definition:
– Did the alleged parody actually comment on or criticize the original work?
– Is the alleged parody sufficiently humorous to an average member of the public?
– Can the alleged parody truly be considered a literary or artistic work?
Indeed, had such definition (or similar definition) been in place historically, it would be natural to ask whether the slogan from Anheuser-Busch, Inc. v. Balducci Publ’ns, 28 F.3d 769 (8th Cir. 1994)— “One Taste and You’ll Drink it Oily” or “Enjoy Cocaine?” as in Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972), were sufficiently humorous to constitute a parody? Whether setting Snuggle Bear on fire as the defendant did in Conopco, Inc. v. 3DO Co., 53 U.S.P.Q. 2d 1146 (S.D.N.Y. 1999) comment substantially on the original work? Or whether a casino advertisement replacing the “New York New York Stock Exchange” with the “New York $lot Exchange” as in N.Y. Stock Exch., Inc. v. N.Y., N.Y. Hotel, LLC, 293 F.3d 550 (2d Cir. 2002), could reasonably be considered a literary or artistic work?
Not much has changed since the article was published, and a multi-factor definition of parody can now, more than ever, provide threshold factors that courts could use to properly distinguish a non-parody from a parody, helping to avoid what McCarthy warned could be the “cry of ‘parody!’. . . magically fend[ing] off otherwise legitimate claims of trademark infringement or dilution.” J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 31:38, at 31-216 (3d ed. 1994)
Justice Kagan to VIP: What’s the Parody?
The same concerns and potential line drawing exercises considered in positing the definition above were on full display during oral argument in Jack Daniel’s Properties, Inc., and were particularly captured in Justice Kagan’s questioning of VIP Products LLC’s counsel, Bennett E. Cooper, in the exchange below:
JUSTICE KAGAN: Well, what is there to it? What is the parody here?
COOPER: The parody?
JUSTICE KAGAN: Yeah.
. . .
JUSTICE KAGAN: Because maybe I just have no sense of humor, but –
. . .
COOPER: The parody is multifold. The –the –the testimony indicates, and it’s not been disputed, that the parody is to make fun of marks that take themselves seriously.
JUSTICE KAGAN: Well, I mean, you say that, but you –you know, you make fun of a lot of marks: Doggie Walker, Dos Perros, Smella R Paw, Canine Cola, Mountain Drool. Are all of these companies taking themselves too seriously?
. . .
JUSTICE KAGAN: I mean, just like soft drinks and liquor –
. . .
JUSTICE KAGAN: –companies take themselves too seriously as a class?
COOPER: I think there are a lot of products that take them too seriously — seriously and merchandise. You don’t see, for example, something near and dear to my heart, a parody of Woodford Reserve bourbon because you don’t get that building up of an edifice of making them into an iconic –a cultural icon and reference point.
When you advertise on TV incessantly and you create this image of yourself as something that’s so important –
JUSTICE KAGAN: So you’re just saying anytime you go out after or you use the mark of a large company, it’s a parody just by definition?
COOPER: Well –
JUSTICE KAGAN: Because they must be — they must take themselves too seriously because they’re a big company.
COOPER: I –I think, as applied here, there’s no doubt that Jack Daniel’s takes itself very seriously.
JUSTICE KAGAN: Well, I don’t know. I don’t think Stella Artois takes itself very seriously.
. . .
JUSTICE KAGAN: They have very funny commercials.
COOPER: Yeah, and I’ve seen their historical commercials, and they would on our parody too. But Jack Daniel’s would be head of the line.
JUSTICE KAGAN: I mean, this is –
JUSTICE KAGAN: Okay. I’ve made my point.
Indeed, Justice Kagan’s questioning focused on whether Respondent’s dog toy was sufficiently humorous to be entitled to parody protection at all and expressed skepticism toward the rationale that Respondent provided that his client was “poking fun of marks that take themselves seriously,” which in this case, as Justice Kagan’s pointed out, appeared to be any “mark of a large company” that sold liquor products.
It will be interesting to see if the Supreme Court wades more deeply into this foray and ultimately provides any standards on the parameters of what is, or is not, properly a parody under First Amendment principles, as the Circuits could really use some guidance on this point.
Skepticism Over VIP’s Purported ‘Noncommercial Use’
Related questioning in this case centered around the commercial nature of VIP’s use of the marks at issue. The Ninth Circuit, in overruling the district court, held that “Although VIP used [Jack Daniel]’s trade dress and bottle design to sell Bad Spaniels, they were also used to convey a humorous message” citing to the TDRA’s exception for “noncommercial use” and Ninth Circuit jurisprudence for the propositions that marks that contain at least some “protected expression” may nevertheless be “noncommercial” even when directly used to “sell” products. See VIP Prod. LLC v. Jack Daniel’s Properties, Inc., 953 F.3d 1170, 1176 (9th Cir. 2020).
The Ninth Circuit’s opinion took an incredibly broad view of the definition of “noncommercial,” which, it appears, at least some of the Justices are not inclined to adopt. Justice Kagan’s emphatically stated “this is a standard commercial product. This is not a political T-shirt. It’s not a film. It’s not an artistic photograph.” Justice Thomas asked Mr. Cooper, “Could you just elaborate a bit on why a product . . . that you can buy online or at Petco is noncommercial?” Justice Sotomayor, echoing her fellow Justices’ concerns, pointed out that an interpretation that “noncommercial is anything that has speech in it” may be “too broad” and “would do away with the exception for parody” noting that even under the Court’s existing “commercial speech doctrine this would still be commerce.”
Thus, an additional point the Court’s opinion appears primed to address is how to interpret the statutory “noncommercial” exception set forth in the TDRA and whether the Court’s commercial speech doctrine is applicable in this context. Reading the tea leaves, it seems the Court may seek to narrow the Ninth Circuit’s application of commerciality in the context of trademark use.