Legal Docket: Dog toys and trademark dilution

MARY REICHARD, HOST: It’s Monday, March 27th. Glad to have you along for today’s edition of The World and Everything in It. Good morning. I’m Mary Reichard.

NICK EICHER, HOST: And I’m Nick Eicher. It’s time for Legal Docket.

The Supreme Court handed down one opinion last week in a victory for a deaf student in Michigan. Miguel Perez sued his public school for failing to provide him an adequate education suited to his hearing loss.

Here’s his attorney Roman Martinez during oral argument in January:

ROMAN MARTINEZ: For 12 years, Sturgis neglected Miguel, denied him an education, and lied to his parents about the progress he was allegedly making in school. This shameful conduct permanently stunted Miguel's ability to communicate with the outside world. It also violated two federal statutes, the I-D-E-A and the A-D-A, giving different remedies to victims of discrimination.

REICHARD: The young man settled one complaint against the school under the I-D-E-A, the Individuals with Disabilities in Education Act. That guarantees children a free public education tailored to their specific needs. That settlement paid for Perez to attend more schooling to learn sign language.

But then the family pursued money damages under the ADA, the Americans with Disabilities Act.

Money damages are not available under the other law.

So, the question was whether Perez could pursue the money claim without first exhausting the administrative process under the other claim.

EICHER: The answer is a unanimous “yes”. And now 27 year old Perez may proceed to sue for money damages without first going through what would be a futile process, An important win for other students living with disabilities.

Now on to an oral argument dealing with claims of trademark infringement. Now Mary, I saw some of the terminology used in the briefs. Let me just say, this is going to be a challenge to get through with a straight face.

RICHARD: Not to worry, Nick. Let me just say the advocates have a leg up on you there. They’ll do the talking for you.

I will say, back when I was in law school I was taught to strive for elegant phrasing even when writing about inelegant things.

But not so with this dispute which is after all about parody; about toys that dogs love and that people who love dogs buy for them.

EICHER: The facts are straightforward: The maker of Jack Daniel’s whiskey sued the maker of squeaky dog toys that parody well-known brands.

One in the line up of toys that VIP Products makes parodies Jack Daniel’s whiskey with its dog toy labeled “Bad Spaniels.” The parody product is shaped like the original with similar typeface and the black and white label.

REICHARD: Not only that, but the whiskey bottle says 40% alcohol by volume, while the toy says it’s, (clear throat, please pardon me here), “43% poo by volume” in addition to being “100% smelly.”

Now there is a disclaimer tag attached to this toy that says specifically that it is not “affiliated with Jack Daniel’s Distillery.” Despite that, Jack Daniel’s claims trademark infringement.

Here’s how it’s lawyer Lisa Blatt started the oral argument:

LISA BLATT: Mr. Chief Justice and may it please the court: This case involves a dog toy that copies Jack Daniels trademark and trade dress and associates its whiskey with dog poop.

EICHER: Well, there you have it. I do not see how the court could possibly be pleased, but here we go. The aforementioned association is further made by changing the original’s description of “Old No. 7 brand” and “Tennessee Sour Mash Whiskey” to a parody on the toy as “The Old No. 2 on your Tennessee Carpet.”

REICHARD: See, Nick, you got through that just fine.

On the other side, lawyer for the toy maker basically argued, hey, lighten up! This isn’t a trademark violation. It’s merely artistic expression and that is entitled to free-speech protection. Lawyer Bennett Cooper:

BENNETT COOPER: In our popular culture, iconic brands are another kind of celebrity. People are constitutionally entitled to talk about celebrities and yes, even make fun of them. Jack Daniel’s advertised in a self-serious way that “Jack” is everyone’s friend. And Bad Spaniels is a parody comparing Jack to man’s other best friend.

REICHARD: Some different legal threads are in play here: For one thing, free speech protection under the First Amendment.

Another is the Lanham Act of 1946, the federal trademark protection law. It forbids the use of a trademark in a manner that is “likely to cause confusion as to the origin, sponsorship, or approval of goods.”

And then there’s the Rogers test, from a 1989 decision out of the Second Circuit. It allows you to riff off of a trademark without the owner’s permission on three conditions: It’s expressive, artistically relevant, and not misleading to consumers.

EICHER: First Amendment. Lanham Act. Rogers test.

Attorney Blatt for Jack Daniel’s argued the court should do away with the Rogers test:

BLATT: It's not whether you get the joke. You get that somebody other than the brand was making the joke because it's -- that's what -- that's all that matters. Not -- ha, ha, ha is not a standard under the Lanham Act. It's whether it's confusing as to source.

EICHER: Source, meaning, the entity with the sole right to use a trademark. Earlier, Blatt expounded on the ancient use of trademarks that protect property rights even as they may restrict speech. That protects investment in goodwill and avoids confusing the consumer.

BLATT: Now, as a practical matter, parodies won’t confuse when differences in marks, markets, or message, typically ridicule, signal that the brand company didn’t make the joke. But absent these features, pervasive copying and trading off a brand’s goodwill tends to confuse. And survey results showing consumer confusion indicate that the parodist did too much copying and not enough distinguishing.

EICHER: The debate was spirited, so to speak. It centered on how the various laws play together. Free speech. Misleading speech. What’s protected? After all, as Justice Samuel Alito put it to lawyer Cooper:

COOPER: Did you agree with the statement that the first amendment doesn’t protect speech that is misleading? We wouldn’t have much speech in this country if that were the case.(laughter)

EICHER: And this exchange between Justice Alito and Blatt, representing Jack Daniel’s:

JUSTICE ALITO: Could any reasonable person think that Jack Daniel's had approved this use of the mark?

BLATT: Absolutely. That's --that's why we won below.

ALITO: Really?

BLATT: Yes, because --

ALITO: All right. Let me envision this scene.

REICHARD: So then Justice Alito laid out the scene: someone comes to the CEO of Jack Daniel’s and says, “I have this idea for a dog toy that looks like our label with a similar-sounding name and we’ll make it look like dog urine is in it.”

That’s what he said, and it took awhile to set it all up. So I’ve edited what follows for time.

ALITO: Do you think the CEO is going to say that's a great idea, we're going to produce that thing?

BLATT: No, but Nationwide ran a Super Bowl commercial with a dead child in it, and they had to pull it because it was such a bad idea. I don't know who approved that one. It was really embarrassing for them.

ALITO: So a reasonable person would ...

BLATT: People make dumb commercials.

ALITO: A reasonable person would not think that Jack Daniel's had approved this. The CEO -- the CEO is going to say this is a great idea.

BLATT: Justice Alito, I don't know how old you are, but you went to law school, you're very smart, you're analytical, you have hindsight bias, and maybe you know something.

ALITO: Well, I went to a law school where I didn't learn any law so--

BLATT: Okay. But --

ALITO: -- so don't – (Laughter.)

BLATT: -- it's just a little rich for people who are at your level to -- to say that you know what the average purchasing public thinks about all kinds of female products that you don't know anything about or dog toys that you might not know anything about. And so I just think --

ALITO: I don't know. I had a dog. I know something about dogs.

REICHARD: Reasoning that if a reasonable person wouldn’t be confused as to who authorized this toy, that’s a check mark in the column labeled “no trademark violation.”

But Justice Elena Kagan wasn’t so sure that this is parody in the first place. Listen to this exchange with Cooper, lawyer for the toy maker:

JUSTICE KAGAN: Because maybe I just have no sense of humor, but (Laughter) what's the parody?

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.

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?

COOPER: Yes. In fact, you don't see a parody as -- as a bourbon – (Laughter.)

EICHER: Hypotheticals kept coming. All trying to figure out whether humor gives toys like Bad Spaniels Silly Squeakers heightened protection under the First Amendment, and therefore block claims of trademark infringement.

REICHARD: Jack Daniel’s has some famous supporters filing briefs: Campbell Soup Company, Patagonia, Nike, Levi Strauss, among others. Plus, the White House, which knows a thing or two about being parodied. But based on the questions, I tend to think Jack Daniel’s might win this one on some narrow basis.

But then again, the justices have a lot to chew on here. (And I wonder if some of them prefer cats.)

And, seriously, that’s this week’s Legal Docket.

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