Who’s Laughing Now? Trademark, Parody Products, and the First Amendment

Everyone loves parody products, those clever almost-branded gifts that draw in a customer, whether online or in a brick-and-mortar store.  Everyone, that is, except the trademark owner. In a recent trademark case, the U.S. Supreme Court made it easier for big brands to enforce their trademarks against joke products.

The case involved Silly Squeakers, a collection of dog toys in the shape of liquor bottles that play off the name and distinctive packaging of famous brands like Stella Artois (“Smella Arpaw”), Bacardi (“Barkparty”) and Jack Daniel’s (“Bad Spaniels”). For example, the Bad Spaniels toy looks like the distinctive Jack Daniel’s bottle, with the same font and text layout but instead of “Old No. 7 Tennessee Sour Mash Whiskey,” Bad Spaniels refers to “The Old No. 2 On Your Tennessee Carpet” and claims to be “43% poo by vol.” and “100% smelly.” The folks at Jack Daniel’s took offense and sued.

In a unanimous opinion, the Supreme Court reversed a lower court decision and held that there's no First Amendment protection for parody products. The lower court had treated parody products as equivalent to “expressive works,” like art or movies, which may use someone else’s trademark as part of the work unless that use has no artistic value or explicitly misleads the public about who created it. But the Supreme Court disagreed: it held that when someone uses a parody mark “as a designation of source for the infringer’s own goods” — i.e., a trademark — the legal analysis turns on trademark law, not the First Amendment.

So, is humor dead? Must parody products be pulled from the shelves? No, it’s not that bad. Under trademark law, infringement requires not just similarity but a “likelihood of confusion.” The likelihood-of-confusion test looks at several factors, including not only the similarity of the marks but the similarity of the products, the channels in which they're marketed, the sophistication of the purchasing consumers, and whether people have actually been confused.

Parody products will often survive that test. In a previous dog products trademark case, a court found that “Chewy Vuiton” did not infringe on the Louis Vuitton trademark because its pet carriers and other products did enough to humorously conjure the LV brand, while making clear that they were definitely not affiliated with the French couture company. Consumers, the court found, weren't likely to be confused, especially given that the products are sold in pet stores and online, not on Park Avenue. Jack Daniel’s may similarly find it tough to prove that the Bad Spaniels toys created a likelihood of confusion.

What should clever parody product manufacturers do to avoid infringement?

• Conjure, don’t copy. You don’t have to slavishly copy a label or design in order to get the joke across.  Courts will often dissect parody products and match up similarities (or differences) in evaluating whether someone could objectively be confused.
• Avoid using the parody mark as your “brand.” Trademarks are “source identifiers” — i.e., they tell a consumer who makes the product. Using a parody mark to identify your company/brand will edge you closer to infringement.
• Steer clear of similar product categories. The closer your parody product is to a product sold by the mark holder, the more likely you are to confuse consumers and raise the ire of a big company. Selling Jack Daniel’s parodied dog toys might fly; food and beverage parody products probably wouldn’t.
• Don’t step in sh*t. Parodies often trade in bathroom humor or sexual innuendo. But, for many markholders, association with poop and sex are anathema to their brand and more likely to draw a lawsuit. Steering clear of taboo topics may help protect your parody.
• Talk to a lawyer first. Too frequently, lawyers don’t get the first phone call until a cease-and-desist letter arrives. Involving your attorney during product design — long before products hit the shelves — can save you a lot of headaches — and money.

Warren Braunig is a partner at Keker, Van Nest & Peters in San Francisco. His practice is centered on intellectual property litigation, particularly in the technology and software industries.

Samuel Koenig is a student at Harvard Law School and a summer law clerk at Keker, Van Nest & Peters.