Trademarks, First Amendment and Spoofs.
“What happens when trademark law collides with the first amendment and spoofs? Can you just claim first amendment and/or spoof and use the good will of someone else’s trademark for your benefit? In the Jack Daniel’s Properties v. VIP Products case the U.S. Supreme Court unanimously said “no.” In that case, VIP Products made a dog toy that looked somewhat like a bottle of Jack Daniels, used the same black label color, used an oval with “The Old No. 2” in it rather than “Old No. 7” and put “Bad Spaniels” on the label. There is little doubt that the dog toy was meant to spoof or parody Jack Daniels whiskey and that people would immediately recognize that. When is parody okay and when is it not okay? First, merely invoking first amendment right to free speech does not work. Trademark law covers commercial use of names and symbols and other items that identify a source (a seller of goods or services). The courts have long recognized that commercial speech is subject to reasonable restriction. If free speech always overcame trademark law, the marketplace would be in chaos. Second, parody is generally not okay when it is being used as a trademark. Here, Bad Spaniels is the name of the dog toy. Moreover, the Bad Spaniels toy bottle takes too much of the Jack Daniel’s bottle look, and the similarities in wording. While most people might figure out that Bad Spaniels is not associated with Jack Daniel’s, it is likely that a significant number of people might think Jack Daniel’s sponsored, approved of and/or licensed the Bad Spaniels dog toy. The parody doctrine is not an automatic way to get out of trademark infringement. Parody is a potential defense in a copyright case, but only where one takes the bare minimum to “conjure up” the product. Here we have a trademark usage of “Bad Spaniels,” i.e., as the name of the product.
How does Weird Al Yankovic get away with his musical parodies? Weird Al is not spoofing trademarks of others. The music is released using his name, not some funny version of the songwriter’s name or performing artist’s name. Weird Al spoofs the lyrics so his issue is copyright, not trademark. Moreover, Weird Al gets the song writers’ permission according to his website at www.WeirdAl.com.
When is parody okay? Parody of a trademark is unlikely to be okay. The reason is that a parody is not really a meaningful parody unless the customer is made to think of the mark being parodied. As soon as that happens there is a possibility of confusion of the customer as to the source of the goods.
If we change the facts of the Bad Spaniels case and suppose the dog toy was named “Bad Spaniels” but was a ball instead of a bottle, had a yellow label, and had no mention of “Old No.” or “Tennessee.” Would you think of Jack Daniel’s if you saw such a dog toy? Probably not. You wouldn’t have any information to connect the dog toy with Jack Daniel’s and there would be no trademark infringement. Now if that ball is in the shape of a bottle and has a black label, there is a little better chance that you will connect the “Bad Spaniels” product with Jack Daniel’s whiskey. As soon as that happens, there is likely infringement.
The lesson is that when it comes to trademarks, if your product name and/or packaging conjures up another company’s trademark, you are likely infringing. In other words, when you are trying to make your customer think of someone else’s product, you are entering the infringement danger zone.” - Partner, David Hoffman.