Document Type
Article
Publication Date
2024
ISSN
0736-7694
Publisher
Yeshiva University Benjamin N. Cardozo School of Law
Language
en-US
Abstract
But that's because, you know, trademark law has interpreted the concept of confusion quite broadly to include, among other things, a notion of sponsorship confusion that might make you think it's a licensed product. All right. And then, in a somewhat circular way, it was decided that the existence of licensing markets is enough to show the way in which consumers are going to be confused about licensing. So that's the theory that Jack Daniel's brings. One of two theories. So that was one of two theories. The other one was a dilution, and in particular dilution by tarnishment, claiming that after you're exposed to the product on the right, particularly its references to poop, that you're going to have a kind of visceral disgust reaction, a visceral disgust reaction that will in some ways translate to how you feel about the Jack Daniel's brand, even if you're perfectly well aware that the product on the left has nothing to do with the product on the right. Okay. So those were the two theories brought by Jack Daniel's-two theories that, you know, were met with some success in the course of litigation. But they were ultimately found by the Ninth Circuit in some sense not to matter because the Ninth Circuit says, "Yeah, but there's something different going on here." This isn't an ordinary product. We'll come back to that, maybe, about whether that's true or not, but it's not an ordinary product. You know, the product on the right can take advantage of the fact that it's expressive, and because it's expressive, we need a different kind of test here.
And, in particular, we can use what's known as the Rogers test. Okay. The Rogers test comes from the Second Circuit case of Rogers v. Grimaldi, involving the movie Ginger and Fred. It was called Ginger and Fred, and Ginger Rogers sued, saying, "I had nothing to do with this movie, and yet somehow my name is being invoked." But the Second Circuit said, "Okay, but it's the title of a movie, and movie makers should have a kind of leeway to title their movies because that's part of the expression in the movie. Right? And, as a result, we shouldn't use an ordinary test for likelihood of confusion. Instead, we should apply some more kind of speech-protective test." I won't go into the details of, you know, exactly what the test is. Okay. And so, in this case, Bad Spaniels says the same thing: "We're being expressive, and we should be able to take advantage of a kind of more speech-protective test, the one that has been previously applied to works of artistic expression." That's how the courts think about it. And the Ninth Circuit said, "Yes, that's right." So this is enough of a kind of work of artistic expression, or at least enough of an expressive work here, that you can use that more defendant-friendly test.
That was as for the infringement claim. And as for the dilution claim, the idea here is that previous cases have suggested that titles of works or the content of the work certainly are non-commercial speech under the First Amendment and that, so long as it's non-commercial speech, it falls within what's known as the non-commercial use exception to dilutions.
Recommended Citation
Stacey Dogan, Christine Haight Farley, Jessica Silbey, Rebecca Tushnet & Felix Wu,
Panel 2: Trademark Law
,
42
Cardozo Arts & Entertainment Law Journal
619
(2024).
Available at:
https://scholarship.law.bu.edu/faculty_scholarship/4019
Comments
Part of Cardozo's Barking up the Wrong Tree: An Exploration of Intellectual Property Law Protections following Bad Spaniels and Andy Warhol Symposium
The following compilation is composed of edited transcripts from the Cardozo Arts & Entertainment Law Journal's 2024 spring symposium, Barking Up the Wrong Tree: An Exploration of Intellectual Property Law Protections Following Bad Spaniels and Andy Warhol, which took place at the Benjamin N. Cardozo School of Law on February 16, 2024. Permission is hereby granted for noncommercial reproduction of these transcripts, in whole or in part, for education or research purposes, including the making of multiple copies for classroom use, subject only to the condition that the name of the journal and speakers, a complete citation, and this copyright notice and grant of permission be included on all copies.