Photo by Kevin Christopher
Top Trademark Holdings of 2023
Every year, trademark law undergoes advancements and evolutions. In 2023, the Supreme Court set forth its most influential decisions within the same month. Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. __ (2023), captured widespread attention given its seemingly commonplace subject matter- a dog toy. In reality, it tackled a longstanding issue courts grapple with every year: how to balance trademark protection against First Amendment rights. The second case, Abitron Austria GmbH v. Hetronic International, Inc., 600 U.S. __ (2023), clarified a pivotal aspect of trademark enforcement: the global reach of trademark protection. Together, these two cases resolved ambiguities found within trademark law and set forth precedents to be followed for years to come.
Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. __ (2023)
In Jack Daniel’s Properties, the U.S. Supreme Court clarified the appropriate legal protection to be afforded to those who use parody or commentary of another’s trademark as a source identifier of their own goods and/or services. The lawsuit involved Jack Daniel’s Properties, Inc, the owner of Jack Daniel’s related trademarks, and VIP Products LLC, a dog toy company. VIP Products sells a line of rubber toys called “Silly Squeakers” which resemble big-name beverage brands. In some cases they use actual company names, like Dos Perros, and in other cases they use variations like Pawsifico.
https://mydogtoy.com/
As part of its Silly Squeakers line, VIP Products produced a dog toy resembling a Jack Daniel’s whiskey bottle. For example, the toy included the wording “Bad Spaniels” instead of “Jack Daniel’s” and “The Old No. 2 On Your Tennessee Carpet” instead of “Old No. 7 Brand Tennessee Sour Mash Whiskey.” Jack Daniel’s was not amused by this parodic dog toy and demanded that VIP Products stop selling the toy immediately. In response, VIP Products filed a lawsuit seeking a court declaration stating they did not infringe or dilute Jack Daniel’s trademark. In response, Jack Daniel’s counterclaimed for infringement and dilution.
In its defense, VIP Products argued there could be no infringement under the Rogers test, a threshold test for providing protection for expressive works under the First Amendment. The Rogers test deems expressive works with “at least some artistic relevance” and not “explicitly misleading as to source or content” as protected from trademark liability. VIP Products claimed its Bad Spaniels dog toy was a protected expressive work because it commented humorously and parodied Jack Daniel’s whiskey. VIP Products also argued there could be no dilution because its dog toy fell within the parody defense of the Lanham Act fair use exclusion for parodies of famous marks.
Ultimately, the Supreme Court unanimously rejected both of VIP Products’ arguments and issued a monumental precedent concerning when both the Rogers test and Lanham Act fair use exclusion apply to protect an alleged trademark infringer from liability. For starters, the Court held that the threshold Rogers test does not apply when an alleged infringer uses a trademark in the way the Lanham Act is intended to protect: as a source identifier. This is because the keystone principle of the Lanham Act is to protect consumers from confusion as to the source of products. In turn, VIP could not use the Rogers test to shield themselves from trademark infringement liability because they used Bad Spaniels as a source identifier. First, the VIP Products placed the Bad Spaniels logo on the Silly Squeakers logo attached to the dog toy, indicating the source of the product. Second, despite no trademark registration for Bad Spaniels, VIP Products had a history of registering other dog toys in their Silly Squeakers line, e.g., “Jose Perro,” as trademarks, further evidencing use of Bad Spaniels as an indication of source. In addition, VIP Products itself stated in its complaint that it “owns and uses Bad Spaniels as a trademark and trade dress for its dog toys.” Thus, the Rogers test could not apply to protect VIP Products from liability. To resolve any potential confusion, the Court set forth the proper procedure to be followed when the Rogers test does not apply because the parody or commentary is used as an indication of source. In such instances, the proper procedure to abide by is the Lanham Act likelihood of confusion test, where the expressive, parodic and commentary aspects of the product will still be analyzed to determine whether consumers will likely think the maker of the mocked product is itself doing the mocking. Second, the Court held that the Lanham Act fair use exclusion does not apply when the use is as a designation of source for the person’s own goods or services. The Court stated that parody is exempt from liability only if it is not used to designate source. Since VIP Products used the Bad Spaniels as an indication of source, it could not shield itself from trademark dilution liability.
In sum, this ruling sets forth very important clarifications to the scope of trademark law, the Lanham Act fair use exclusion, and the Rogers test. It allows businesses who own federally registered trademarks to have more confidence in the protection of such marks from alleged infringers using parody or commentary. It also serves as a clear warning to makers of parody or commentary products moving forward that First Amendment protection does not immunize them from trademark liability in all instances. Additionally, this ruling changes courts’ analysis of trademarks involving parodic and commentary aspects. Courts must now ask whether the alleged infringer uses the mark as a source identifier, trademark, not whether the use has expressive qualities to fall within First Amendment protection of the Rogers test or Lanham Act fair use exclusion for parodies of famous marks.
Abitron Austria GmbH v. Hetronic International, Inc., 600 U.S. __ (2023)
In Abitron Austria, the U.S. Supreme Court deliberated on whether the Lanham Act applies extraterritorially. The lawsuit involved Hetronic, a remote control and construction manufacturer company located in the U.S., and Abitron, a former licensed distributor for Hetronic based abroad. When Abitron claimed ownership of Hetronic’s intellectual property and began affixing Hetronic’s marks on the products it sold, Hetronic filed suit under the Lanham Act for trademark infringement due to unauthorized use. Hetronic sought damages for Abitron’s infringing acts worldwide. Abitron argued that the Lanham Act did not have extraterritorial application and that only three percent of their sales occurred within the United States. The lower court ruled in favor of Hetronic, citing that the the Lanham Act had extraterritorial reach, and awarded ninety million dollars in damages.
Eventually, the case reached the Supreme Court, who unanimously reversed the decisions of the courts and held that the Lanham Act does not apply extraterritorially. The Court supported its ruling with the longstanding presumption that Congressional legislation is intended to apply only within the territorial jurisdiction of the United States unless a contrary intent is evident. The presumption against extraterritoriality is rebutted only when Congress has affirmatively instructed that such legislation should apply to foreign conduct. While the Lanham Act mentions foreign commerce in its definition of commerce, the Court ultimately held that such mention was not sufficient, and the Lanham Act does not provide any express instruction about extraterritorial application. Thus, the Lanham Act does not apply extraterritorially.
Given that the Lanham Act does not apply extraterritorially, the Court then determined when conduct relevant to the focus of the Lanham Act is considered domestic. The Court held that the location of the conduct relevant to the focus of the Lanham Act determines whether such conduct is domestic or not. Thus, the Court needed to establish the focus of the Lanham Act. The minority of justices argued that the focus of the Lanham Act was whether the infringing use, both in the United States or elsewhere, creates a likelihood of confusion in the United States. Factors considered in such an analysis would include the location of the relevant conduct, the location of the parties, and the interests that Congress seeks to protect or regulate. However, the majority disagreed and held that the focus of the Lanham Act is the location of the infringing use in commerce. If the location of the infringing use in commerce occurs within the United States, then the conduct is domestic and subject to the Lanham Act. The majority based their ruling on the language of the Lanham Act itself, which prohibits the unauthorized use in commerce of a protected trademark when such use is likely to cause confusion. Thus, while likelihood of confusion is a necessary characteristic for a use to be prohibited under the Lanham Act, it is not a separate requirement. Based on this conclusion, the Court remanded the case to the lower court for it to determine, using the “use in commerce” standard, whether the infringing use of Abitron occurred domestically or extraterritorially. Only the infringing conduct deemed to have occurred within the United States, domestically, will be subject to the Lanham Act and damages.
Although the Court established a clear standard, “infringing use in commerce,” to determine whether the infringing use at hand falls under the Lanham Act’s domestic reach, many questions remain unanswered. For instance, is a use considered domestic only when physical shipment of the infringing product is made into the United States, or is it sufficient for the infringer to foresee later shipment into the United States? Such determinations are left for the lower court to determine.
In conclusion, this ruling establishes a clear precedent regarding the global reach of the Lanham Act. Due to its strict domestic limitations, trademark owners are restricted in the amount of damages they may recover from foreign infringers. Furthermore, if only direct sales to the United States by infringers are considered as domestic uses in commerce, counterfeit goods sold initially within foreign counties which later enter U.S. commerce will be unregulated by the Lanham Act. Since such practices are a growing problem, if left unregulated by the Lanham Act, trademark owners will have no recourse against a large amount of foreign infringing use that occurs. Thus, the determinations to be made regarding these unanswered questions are crucial for both trademark owners and their ability to seek redress under the Lanham Act, as well as for trademark law in general.
About Micah Gonzalez, CIPP/US
Micah is a former collegiate volleyball player and attorney at Rockridge®, a Certified B Corp and RealLeaders Top 150 global impact company. She previously worked for the Nashville Predators, and helps athletes, entertainers, and influencers monetize their rights, and helps companies and organizations build brand pipelines. Micah holds a CIPP/US certification in data privacy, and additionally helps companies strategize around protection and use of innovative company and customer data.
Practice Areas
Micah’s practice areas include:
- athlete and entertainer rights;
- brand law, including copyright and trademark practice;
- data privacy; and,
- social enterprise, ESG, and B Corps.
Contact
Email Micah Barrett directly at micah@rockridgelaw.com.
