4 ms·

The thing that confuses me (as someone that knows very little about the topic) is that I thought the primary purpose of trademark law is to avoid consumer confu

The thing that confuses me (as someone that knows very little about the topic) is that I thought the primary purpose of trademark law is to avoid consumer confusion (as opposed to copyright which is about IP, which I actually could see protecting logos and other brand designs in cases like these). If I look at that dog toy, I understand that it's clearly referencing JD, but it also seems obviously evidently clear that it's not JD, nor do I think people would assume it was produced by JD. Of course when a decision comes down 9-0 from the Supreme Court, I have to assume I'm missing some understanding here.

technothrasher 3y ago
Well, there were two points about that on this case. The first was that JD hired an expert to do a blind study on whether there would be potential confusion (and that's what you have to show, potential not necessarily actual) and found that, despite what one might think, it showed there could indeed be confusion. But also, even if you were able to show the expert's study design was badly done and/or biased, there is another prong to trademark and that is dilution. When the brand is as famous as JD, they can argue that another company copying them is causing harm to their brand's reputation. Considering this dog toy product compared JD to dog shit, the court ruled that there definitely was dilution. The last part is if the parody is directly related to the commercial aspect of the product. The defendant in this case admittedly used the parody brand as a trademark for themselves, and so the courts found it was indeed directly related to the business aspect.
- narrator 3y ago
  I think you mean trademark tarnishment instead of dilution. The act of associating a trademarked product with something distasteful or disagreeable is considered a tortious offense called tarnishment. Tarnishment is when you use a Dallas Cowboy's cheerleader outfit in an adult film[1]. The filmmakers argued it was parody, but the judges didn't think the adult film was comedic. However, naming a reasonably good character in your children's film "SPA'AM" is not considered trademark tarnishment[2]. [1]https://scholar.google.com/scholar_case?case=11014508973363071529&q=dallas+cowboys+tarnishment&hl=en&as_sdt=806 https://scholar.google.com/scholar_case?case=110145089733630... [2]https://scholar.google.com/scholar_case?case=16188685672866891690&q=spam+tarnishment&hl=en&as_sdt=806 https://scholar.google.com/scholar_case?case=161886856728668...
hn_throwaway_99 3y ago
> If I look at that dog toy, I understand that it's clearly referencing JD, but it also seems obviously evidently clear that it's not JD, nor do I think people would assume it was produced by JD I disagree with that, and so did the Supreme Court justices. Companies put out "side products" of their own all the time. Think about Tesla's flamethrower, or their tequila. I could easily imagine a liquor company putting out some good-natured pet products that imitated their primary brand.
- rblatz 3y ago
  The Supreme Court made no such ruling. They ruled that the parody should not be considered protected under 1st amendment free speech grounds. They sent it back to the lower courts for a ruling on if it violated copyright under consumer confusion grounds.
- colechristensen 3y ago
  Costco has sold dog toy Kirkland liquor bottles with easy dog puns.
- snapplebobapple 3y ago
  So we should sue all glass manufacturers to stop them from putting out windows in case Microsoft decides to get into that side business? I am of course joking, but that's the problem with protecting side products, especially in likeness vs actual logo situations (again,just think of all the manufacturers of crappy, leaky, easily breakable windows that need to be upgraded prematurely, that would have to shut down). If you study economics for any length of time you will realize the majority of human misery is driven by market power abuses restricting human ingenuity, pushing labor prices artificially, etc. Copyright, patent, and trademark explicitly increase market power substantially and so it is very dangerous to do what the supreme court did, as the fundamental test for these things should be "what is the minimum we can do to solve x?" where x is a problem like brand confusion, product safety, etc. What was done in this ruling was to push us even further from the minimum and it's a very bad thing for society.
  - hn_throwaway_99 3y ago
coldpie 3y ago
Reading the article, I believe the SCOTUS decision is not making any claim whether the toy violates JD's trademark. Rather, they are deciding that the lower court's ruling that it did not violate was invalid because that court applied a rule that it shouldn't have. So it will probably be re-tried without that rule applied, and a jury (or judge or whoever) will then decide whether it violates under that revised understanding of the law. The argument you're making would be relevant to that trial, not the appeal that SCOTUS just ruled on. In general, appeals courts such as SCOTUS never decide on the facts of the case. They only determine whether a lower court "screwed up" somehow, and can reverse rulings or offer re-trials if so. Relevant quotes from the article: > But in a 9-0 decision, the justices said a precedent known as the Rogers test for assessing the use of trademarks in artistic expression did not apply to VIP's products, reversing a U.S. appeals court > The Rogers test is "not appropriate when the accused infringer has used a trademark to designate the source of its own goods - in other words, has used a trademark as a trademark," Justice Elena Kagan wrote. > The whiskey maker will still have to prove VIP's toys are likely to confuse potential customers into thinking it was affiliated with them in order to win its infringement case.
- gms7777 3y ago
  Thanks, this helps clarify it a lot. I went and looked up a few more articles, and I think I still remain confused a bit about the second quote you list -- specifically what it means to use "a trademark as a trademark", as it seems like the decision written by Justice Kagan hinges on this concept.
  - jcranmer 3y ago
    The term "trademark" is literally a "mark" (identifying symbol) for "trade" (commercial purposes). Kagan's quote is basically saying that the Roger's test only applies when you're using trademarks for noncommercial purposes.
    - simiones 3y ago
      It's not about non-commercial purposes. "Barbie Girl", the song that actually created the Rogers Test to begin with, is definitely a commercial product. The new decision says that the Rogers Test should only be applied to things that are not in and of themselves trademarks. So, if someone is referencing the Pepsi logo in their movie, or in an advert, or in a painting they are selling, you should apply the Rogers Test to see if that is a violation of the trademark or not. But if the Pepsi logo (or something that Pepsi claims is too similar to it) is the only one showing up on their beverage packaging, or on the shoes they're selling, or on a T-shirt and all of its labeling, even if that T-shirt is being given away at a charity event and is thus non-commercial - well, then they are using a trademark as a trademark, and now they can't rely on the Rogers test. Instead, they have to be judged on the buyer confusion standard (would a regular person believe they are getting an official Pepsi product when seeing this item, or not?).
simcop2387 3y ago
So the SCOTUS didn't rule that it did or did not violate the trademark. They ruled that there wasn't a direct first amendment protection for it and that it needs to go back to the lower courts to be adjudicated. Basically the case can't be dismissed outright based on first amendment precedent/law.
harles 3y ago
I don’t fully follow this, but this seems to be the crux of the ruling: > The Rogers test is "not appropriate when the accused infringer has used a trademark to designate the source of its own goods - in other words, has used a trademark as a trademark," Justice Elena Kagan wrote. … > VIP had conceded that it used "Bad Spaniels" as a trademark. They then make a comparison to the song Barbie Girl (apparently also resulted in a lawsuit but with the opposite outcome), since that uses a trademark not as a trademark. This all seems to be about specifically whether the Rogers Test[0] applies, with brand confusion questions still requiring proof later (probably by a lower court): > The whiskey maker will still have to prove VIP's toys are likely to confuse potential customers into thinking it was affiliated with them in order to win its infringement case. [0]: https://en.m.wikipedia.org/wiki/Rogers_v._Grimaldi https://en.m.wikipedia.org/wiki/Rogers_v._Grimaldi
cryptonector 3y ago
> Of course when a decision comes down 9-0 from the Supreme Court, I have to assume I'm missing some understanding here. 9-0 is a great clue that if the headline is confusing then maybe it's time to read the controlling opinion in the decision.
Rebelgecko 3y ago
The question about consumer confusion is what gets figured out in the lawsuit. My understanding is that the Supreme Court ruling was about whether or not that lawsuit is allowed to go forward, NOT the actual outcome of the lawsuit.
bena 3y ago
What you're missing is "branding" in general. Branding has almost transcended physical products. Apple Computers and Apple Corps were allowed to exist in the same markets because computers are not music. However, the now Apple Inc is more than computers. It's software, phones, tablets, chip manufacturing, streaming, etc. No, no one is going to confuse a dog toy with a bottle of Jack Daniel's. Just like no one would confuse a magnet, shirt, pin, or a plethora of merchandise with actual Jack Daniel's whiskey. But the Brown-Forman Corporation licenses the likeness of the label and bottle to make all of those items and more. The logotype, the shape of the bottle, the colors, all serve to remind people of the core product. They want to evoke a certain feeling associated with that brand. And if a product with their branding is made to a poor standard, if a chew toy is made with material harmful to dogs, there is a chance that people will assume that Brown-Forman is responsible. And they may want to actually make a Jack Daniel's themed chew toy. Or license their IP to someone to do it for them. So basically, since brands aren't really tied to a singular product any more, the entire idea of "separate domains" is rendered effectively moot at this point. Also, IP is the larger term. It encompasses trademark law, copyright, trade secrets, and others. Trademark is actually fairly strict, "fair use" doesn't apply, and parody is not a protection

technothrasher 3y ago

Well, there were two points about that on this case. The first was that JD hired an expert to do a blind study on whether there would be potential confusion (and that's what you have to show, potential not necessarily actual) and found that, despite what one might think, it showed there could indeed be confusion. But also, even if you were able to show the expert's study design was badly done and/or biased, there is another prong to trademark and that is dilution. When the brand is as famous as JD, they can argue that another company copying them is causing harm to their brand's reputation. Considering this dog toy product compared JD to dog shit, the court ruled that there definitely was dilution. The last part is if the parody is directly related to the commercial aspect of the product. The defendant in this case admittedly used the parody brand as a trademark for themselves, and so the courts found it was indeed directly related to the business aspect.

narrator 3y ago
I think you mean trademark tarnishment instead of dilution. The act of associating a trademarked product with something distasteful or disagreeable is considered a tortious offense called tarnishment. Tarnishment is when you use a Dallas Cowboy's cheerleader outfit in an adult film[1]. The filmmakers argued it was parody, but the judges didn't think the adult film was comedic. However, naming a reasonably good character in your children's film "SPA'AM" is not considered trademark tarnishment[2]. [1]https://scholar.google.com/scholar_case?case=11014508973363071529&q=dallas+cowboys+tarnishment&hl=en&as_sdt=806 https://scholar.google.com/scholar_case?case=110145089733630... [2]https://scholar.google.com/scholar_case?case=16188685672866891690&q=spam+tarnishment&hl=en&as_sdt=806 https://scholar.google.com/scholar_case?case=161886856728668...

hn_throwaway_99 3y ago

> If I look at that dog toy, I understand that it's clearly referencing JD, but it also seems obviously evidently clear that it's not JD, nor do I think people would assume it was produced by JD I disagree with that, and so did the Supreme Court justices. Companies put out "side products" of their own all the time. Think about Tesla's flamethrower, or their tequila. I could easily imagine a liquor company putting out some good-natured pet products that imitated their primary brand.

rblatz 3y ago
The Supreme Court made no such ruling. They ruled that the parody should not be considered protected under 1st amendment free speech grounds. They sent it back to the lower courts for a ruling on if it violated copyright under consumer confusion grounds.
colechristensen 3y ago
Costco has sold dog toy Kirkland liquor bottles with easy dog puns.
snapplebobapple 3y ago
So we should sue all glass manufacturers to stop them from putting out windows in case Microsoft decides to get into that side business? I am of course joking, but that's the problem with protecting side products, especially in likeness vs actual logo situations (again,just think of all the manufacturers of crappy, leaky, easily breakable windows that need to be upgraded prematurely, that would have to shut down). If you study economics for any length of time you will realize the majority of human misery is driven by market power abuses restricting human ingenuity, pushing labor prices artificially, etc. Copyright, patent, and trademark explicitly increase market power substantially and so it is very dangerous to do what the supreme court did, as the fundamental test for these things should be "what is the minimum we can do to solve x?" where x is a problem like brand confusion, product safety, etc. What was done in this ruling was to push us even further from the minimum and it's a very bad thing for society.
- hn_throwaway_99 3y ago

coldpie 3y ago

Reading the article, I believe the SCOTUS decision is not making any claim whether the toy violates JD's trademark. Rather, they are deciding that the lower court's ruling that it did not violate was invalid because that court applied a rule that it shouldn't have. So it will probably be re-tried without that rule applied, and a jury (or judge or whoever) will then decide whether it violates under that revised understanding of the law. The argument you're making would be relevant to that trial, not the appeal that SCOTUS just ruled on. In general, appeals courts such as SCOTUS never decide on the facts of the case. They only determine whether a lower court "screwed up" somehow, and can reverse rulings or offer re-trials if so. Relevant quotes from the article: > But in a 9-0 decision, the justices said a precedent known as the Rogers test for assessing the use of trademarks in artistic expression did not apply to VIP's products, reversing a U.S. appeals court > The Rogers test is "not appropriate when the accused infringer has used a trademark to designate the source of its own goods - in other words, has used a trademark as a trademark," Justice Elena Kagan wrote. > The whiskey maker will still have to prove VIP's toys are likely to confuse potential customers into thinking it was affiliated with them in order to win its infringement case.

gms7777 3y ago
Thanks, this helps clarify it a lot. I went and looked up a few more articles, and I think I still remain confused a bit about the second quote you list -- specifically what it means to use "a trademark as a trademark", as it seems like the decision written by Justice Kagan hinges on this concept.
- jcranmer 3y ago
  The term "trademark" is literally a "mark" (identifying symbol) for "trade" (commercial purposes). Kagan's quote is basically saying that the Roger's test only applies when you're using trademarks for noncommercial purposes.
  - simiones 3y ago
    It's not about non-commercial purposes. "Barbie Girl", the song that actually created the Rogers Test to begin with, is definitely a commercial product. The new decision says that the Rogers Test should only be applied to things that are not in and of themselves trademarks. So, if someone is referencing the Pepsi logo in their movie, or in an advert, or in a painting they are selling, you should apply the Rogers Test to see if that is a violation of the trademark or not. But if the Pepsi logo (or something that Pepsi claims is too similar to it) is the only one showing up on their beverage packaging, or on the shoes they're selling, or on a T-shirt and all of its labeling, even if that T-shirt is being given away at a charity event and is thus non-commercial - well, then they are using a trademark as a trademark, and now they can't rely on the Rogers test. Instead, they have to be judged on the buyer confusion standard (would a regular person believe they are getting an official Pepsi product when seeing this item, or not?).

simcop2387 3y ago

So the SCOTUS didn't rule that it did or did not violate the trademark. They ruled that there wasn't a direct first amendment protection for it and that it needs to go back to the lower courts to be adjudicated. Basically the case can't be dismissed outright based on first amendment precedent/law.

harles 3y ago

I don’t fully follow this, but this seems to be the crux of the ruling: > The Rogers test is "not appropriate when the accused infringer has used a trademark to designate the source of its own goods - in other words, has used a trademark as a trademark," Justice Elena Kagan wrote. … > VIP had conceded that it used "Bad Spaniels" as a trademark. They then make a comparison to the song Barbie Girl (apparently also resulted in a lawsuit but with the opposite outcome), since that uses a trademark not as a trademark. This all seems to be about specifically whether the Rogers Test[0] applies, with brand confusion questions still requiring proof later (probably by a lower court): > The whiskey maker will still have to prove VIP's toys are likely to confuse potential customers into thinking it was affiliated with them in order to win its infringement case. [0]: https://en.m.wikipedia.org/wiki/Rogers_v._Grimaldi https://en.m.wikipedia.org/wiki/Rogers_v._Grimaldi

cryptonector 3y ago

> Of course when a decision comes down 9-0 from the Supreme Court, I have to assume I'm missing some understanding here. 9-0 is a great clue that if the headline is confusing then maybe it's time to read the controlling opinion in the decision.

Rebelgecko 3y ago

The question about consumer confusion is what gets figured out in the lawsuit. My understanding is that the Supreme Court ruling was about whether or not that lawsuit is allowed to go forward, NOT the actual outcome of the lawsuit.

bena 3y ago

What you're missing is "branding" in general. Branding has almost transcended physical products. Apple Computers and Apple Corps were allowed to exist in the same markets because computers are not music. However, the now Apple Inc is more than computers. It's software, phones, tablets, chip manufacturing, streaming, etc. No, no one is going to confuse a dog toy with a bottle of Jack Daniel's. Just like no one would confuse a magnet, shirt, pin, or a plethora of merchandise with actual Jack Daniel's whiskey. But the Brown-Forman Corporation licenses the likeness of the label and bottle to make all of those items and more. The logotype, the shape of the bottle, the colors, all serve to remind people of the core product. They want to evoke a certain feeling associated with that brand. And if a product with their branding is made to a poor standard, if a chew toy is made with material harmful to dogs, there is a chance that people will assume that Brown-Forman is responsible. And they may want to actually make a Jack Daniel's themed chew toy. Or license their IP to someone to do it for them. So basically, since brands aren't really tied to a singular product any more, the entire idea of "separate domains" is rendered effectively moot at this point. Also, IP is the larger term. It encompasses trademark law, copyright, trade secrets, and others. Trademark is actually fairly strict, "fair use" doesn't apply, and parody is not a protection