Once Again, Supreme Court Suggests That The 1st Amendment Must Stand Aside For ‘Intellectual Property’

Free Speech

from the drink-up dept

A few weeks back, we wrote about the Supreme Court’s decision in the case between the Andy Warhol Foundation and Lynn Goldsmith, regarding the copyright on certain images that Warhol painted based on a Goldsmith photograph, and exploring under what conditions it was protected by fair use. We felt that the Court completely ignored the 1st Amendment interests at play, but there were many people (including close friends) who have argued that the ruling was “narrow” and not so problematic. We shall see.

Last week, the Supreme Court also ruled in another case that we’ve written about a few times, regarding whiskey maker Jack Daniels and dog chew toy maker VIP products, which made a chew toy called “Bad Spaniels” made to parody the well known Jack Daniels’ bottle.

There were lots of issues regarding trademark law at play in the case, and it has bounced around the courts for years, but the key question before the Supreme Court here regarded what test should be used in cases of parody. Normally (though not always), as regular Techdirt readers will know, trademark law goes by the “likelihood of confusion” question for determining whether or not a use is infringing. Since the crux of trademark law is about recognizing the origin of the product, the question of whether or not there’s any confusion is often the most important.

That said, a case from a few decades ago, Rogers v. Grimaldi, established a test for trademark when there were 1st Amendment free expression issues at play, designed to make sure it’s protecting speech. In this case, the 9th Circuit used the Rogers test to dump the case, saying that there was no trademark infringement. Jack Daniels challenged the use of the Rogers test, leading many to fear a ruling that would cut back on free speech protections, especially given how often bogus trademark claims are used to stifle speech. This is why there were so many amicus briefs in the case from free speech groups.

In many ways, this ruling had some similarities to the Warhol case, in that it feels narrowly focused, and many people we agree with breathed a sigh of relief, saying that the ruling isn’t that bad, as it leaves the Rogers test mostly intact. And, as with the Warhol case, I agree that the ruling absolutely could have been a lot worse.

But, there were still some elements that I find worrisome, in the same way that there were elements of the Warhol case that were worrisome. And, those elements were… actually kind of similar. In both cases, the Supreme Court justices more or less suggest that the 1st Amendment sometimes needs to stand aside in “intellectual property” cases.

Specifically, in this case, the Supreme Court said that the Bad Spaniels case could be decided based on traditional trademark terms regarding likelihood of confusion, rather than even getting to the Rogers test and questions related to free expression and the 1st Amendment:

The Ninth Circuit was mistaken to believe that the First Amendment demanded such a result. The court thought that trademark law would otherwise “fail[] to account for the full weight of the public’s interest in free expression.” 953 F. 3d, at 1174. But as the Mattel (i.e., Barbie) court noted, when a challenged trademark use functions as “source-identifying,” trademark rights “play well with the First Amendment”: “Whatever first amendment rights you may have in calling the brew you make in your bathtub ‘Pepsi’” are “outweighed by the buyer’s interest in not being fooled into buying it.” 296 F. 3d, at 900. Or in less colorful terms: “[T]o the extent a trademark is confusing” as to a product’s source “the law can protect consumers and trademark owners.” Tam, 582 U. S., at 252 (Kennedy, J., concurring in part and concurring in judgment); see Friedman v. Rogers, 440 U. S. 1, 15 (1979) (rejecting a First Amendment challenge to a law restricting trade names because of the “substantial” interest in “protecting the public from [their] deceptive and misleading use”). Or yet again, in an especially clear rendering: “[T]he trademark law generally prevails over the First Amendment” when “another’s trademark (or a confusingly similar mark) is used without permission” as a means of “source identification.” Yankee Publishing Inc. v. News Am. Publishing Inc., 809 F. Supp. 267, 276 (SDNY 1992) (Leval, J.) (emphasis deleted). So for those uses, the First Amendment does not demand a threshold inquiry like the Rogers test. When a mark is used as a mark (except, potentially, in rare situations), the likelihood-of-confusion inquiry does enough work to account for the interest in free expression.

In this case, the Supreme Court basically sent the case back to the 9th Circuit to review for “likelihood of confusion,” which VIP Products is likely to win anyway.

But, still, as in the Warhol case, the court here seems to be suggesting that if something is a core “intellectual property” issue we set aside the 1st Amendment concerns. And, as we noted in Warhol, that’s going to lead to some problematic results.

As EFF (who noted that the decision was mostly good) notes in its writeup of the ruling, we should be concerned as to where this leads:

Finally, it’s troubling that the Court went directly from concluding that source-identifying trademark uses fall within trademark law’s “heartland” to concluding that no further First Amendment scrutiny was needed. That approach is in line with a frustrating trend in trademark and copyright cases to dispense with the traditional—and more protective—forms of First Amendment analysis applied to restrictions on speech in other areas of law. Congress’s own efforts to accommodate free speech concerns notwithstanding, statutory rights never trump Constitutional rights, and we’re disappointed that the Court did not evaluate the issues here accordingly.

To me that’s the key, in both this case and in the Warhol case. The Justices in both seem to suggest that copyright law or trademark law should simply step in front of the 1st Amendment. But that can’t be. Laws cannot override the Constitution, and in both cases, it seems that a 1st Amendment analysis is necessary at some point.

Otherwise, we are repeatedly going to run into future cases where copyright and trademark law is used to silence speech, in which courts won’t even consider the expressive concerns, because they’ll argue the Supreme Court has said that copyright and trademark law override the 1st Amendment.

Filed Under: 1st amendment, dog toys, free speech, lanham act, likelihood of confusion, parody, rogers test, supreme court, trademark
Companies: jack daniels, vip products