Free Speech, Chatting About Friends, Kraken/Crackin’ On AI, & Thinking About Fred & Ginger: Generated Content, Amici Curiae, & A Case About Jack Daniels That Dances Around Trademark Issues And Leaves Some Things To Chew On | International Lawyers Network

Lots of people are talking about ChatGPT.

Some, like those at Microsoft, see it as a valuable tool to be integrated into their products and platforms; indeed, one of its lawyers thought that the answer provided by ChatGPT to his legal question “sounds like a pretty good lawyer .” But others are wondering whether we should be “terrified” of ChatGPT, and even those knowledgeable about computer programming can be “freaked out” by the program.  Some are fueling the terror by comparing ChatGPT’s release to the unleashing of the Kraken.  And the debate continues, with Seattle, Los Angeles, NYC, Fairfax County (Virginia), and  Montgomery County (Alabama) for example, having banned its use on or blocked its access on their public school systems and devices, while other educators are advocating its incorporation into the curriculum, according to both Forbes and the New York Times.

Comparing the content-generating AI platform to the Kraken makes sense.  “’Kraken’ comes from the German word for ‘octopus,’” Like an octopus, ChatGPT seems to be reaching out into multiple different directions simultaneously; at least for now, the best one can say about ChatGPT replacing students, teachers or lawyers is that “[t]hese are certainly mythical tales,” and can either be viewed as “typically rely[ing] on a grain of truth that gets distorted” or  as helpful explanations “based in fact.”  While, for some, the release of ChatGPT seems accompanied by a dramatic feel, my experience with ChatGPT started with a much more sitcom feel but had an admittedly surprising ending.

Why?  Because I thought ChatGPT might get me off to a great start on this ILN article.  I had last time out expressed an interest in following developments in Jack Daniels v. VIP Products, the so-called “Bad Spaniels” case.  The slew of amicus and other briefs had been filed, and it was time to “get crackin’ on” this blog post, as in time to get moving on the drafting.  So, I signed up into ChatGPT, and entered the query “compare and contrast arguments of amicus curiae in ‘bad spaniels’ case,” only to get the response that ChatGPT was unfamiliar with that case, so I entered the formal name and docket information for the case, and got a serviceable summary of the parties’ positions in the case.  But as to the positions of amici, all I got was “In amicus briefs filed in the case, some parties likely supported the arguments put forth by Jack Daniel’s, while others likely supported the arguments of VIP Products.” (Emphasis added)  Not much help, and when I added some of the names of specific filers of such briefs, I did not get a summary of their arguments, much less contrast against others.  I got a statement noting that given the name of the organization entered, it is “likely” that such an amicus “would have supported Jack Daniel’s argument” and “[t]hey may also have added” certain things to the argument.  This left me still needing to get crackin’ on the assignment in that first sense of moving forward and wanting to simply be cracking on (i.e. making fun of) the weakness of the ChatGPT response.  So, in this post, I guess I am doing both.

Having already used the Kraken comparison to crack on the mythic failure of ChatGPT to give me a substantive leg up on what is happening in the Bad Spaniels’ case, I will throw out another bit of information to be fair.  It may be that the newness of the amicus filings in the Jack Daniels case hampered the response.  I say that because the query “compare and contrast arguments raised by amicus curiae in supreme court in Obamacare case” got me a very serviceable starting point.  In further defense of my conclusions, however, Independent Business v. Sebelius was decided eleven years ago, and lawyers are usually called up to deal with newer, emerging issues.

Now let me get to work on the actual case analysis of the current case rather than an old one.

Numerous amicus briefs were filed in Jack Daniel’s Properties, Inc., v. VIP Products LLC, Docket No. 22-148, both before and after the petition for certiorari was granted on November 21, 2022. 

Before Jack Daniel’s petition was granted, eight different amicus curiae filings were made with the Supreme Court.  Since the petition was granted sixteen additional amicus curiae briefs have been filed.  Before turning to themes found among the briefs filed by each friend of the court, let me (or really ChatGPT) provide a quick summary of the case:

In the case of Jack Daniel’s Products v. VIP Products, Jack Daniel’s, the maker of the popular whiskey brand, filed a lawsuit against VIP Products, a company that sells a dog toy shaped like a whiskey barrel.

Jack Daniel’s argued that the toy infringed on their trademark, as the shape of the whiskey [bottle] is closely associated with their brand. They also argued that the toy could lead to confusion among consumers, as it could be mistaken for an official Jack Daniel’s product.

VIP Products, on the other hand, argued that their toy was protected under the doctrine of “fair use” as it was being used in a non-trademark sense, and that it was not likely to cause confusion among consumers. They also argued that the toy was a parody of the Jack Daniel’s brand, and thus protected under the First Amendment.

That is the serviceable summary referenced above, which mistakenly claimed that the toy was shaped like a “barrel” rather than a “bottle” and that failed to note who had actually prevailed below.  I have previously noted that the Ninth Circuit ruled that the First Amendment insulated VIP Products from liability in this case, and Jack Daniels is seeking to have the Supreme Court overrule that decision, which I also mentioned here.

Key to the Ninth Circuit’s decision was its reliance on the Second Circuit’s 1989 decision in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which deserves some further mention here.  (Again, what follows is from my head and hand because my request to ChatGPT to summarize holding and analysis of Rogers got the e-equivalent of a sheepish attempt to “pass” on the question from the visiting law prof).  Rogers involved the famed dancer Ginger Rogers, who along with Fred Astaire, made up one of:

the most famous duos in show business history. Through their incomparable performances in Hollywood musicals, Ginger Rogers and Fred Astaire established themselves as paragons of style, elegance, and grace. A testament to their international recognition, and a key circumstance in this case, is the fact that Rogers and Astaire are among that small elite of the entertainment world whose identities are readily called to mind by just their first names, particularly the pairing “Ginger and Fred.” This appeal presents a conflict between Rogers’ right to protect her celebrated name and the right of others to express themselves freely in their own artistic work. Specifically, we must decide whether Rogers can prevent the use of the title “Ginger and Fred” for a fictional movie that only obliquely relates to Rogers and Astaire.

[Rogers, 875 F.2d at 996]

The Rogers court held, at least as to the dancer’s Lanham Act claim, that the defendant was entitled to summary judgment. Id. at 1001-1002.  Despite some candid statements as to why purchasers of “utilitarian” and “ordinary commercial” parts as well as buyers of “works of artistic expression” each have the “right not to be misled as to the source of the product,” Id. at 997-98, Rogers limited the application of the Lanham Act’s prohibition on false advertising “to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. In the context of allegedly misleading titles using a celebrity’s name, that balance will normally not support application of the Act unless the title has no artistic relevance to the underlying work whatsoever, or if it has some artistic relevance unless the title explicitly misleads as to the source or the content of the work.” Id. at 999.  In VIP Products v. Jack Daniels Products, 953 F.3d 1170, 1172 (9th Cir. 2022), the Ninth Circuit found that Rogers’ analysis could apply outside of the artistic-works-in-false-advertising situation in Rogers itself and applied that approach in a matter involving an ordinary consumer product in a trademark, trade dress, and dilution context.

So with that background, let’s start with that first batch of amicus filings in September 2022. 

Several of the amici supporting Jack Daniels emphasize the issues of confusion, and the need to treat ordinary consumer goods differently than traditional expressive works.  For example, amicus curiae American Intellectual Property Law Association (“AIPLA”) filed a twenty-two-page in support of the grant of certiorari, arguing that the chew toy, as a consumer product, did not merit the same sort of First Amendment protections found in Rogers to apply to artistic, expressive works like films, books, paintings, and songs because the mere chew toy was likely to cause confusion among consumers, a position also pushed in the eleven-page brief filed by Constellation Brands, Inc., a consumer packaged goods company, in support of the petition.  The twenty-four-page brief from The International Trademark Association (“INTA”) claims to support neither party, but argues that the Ninth Circuit is nonetheless wrong; INTA then argues in favor of maintaining the distinction between consumer products and traditionally expressive works, asserting that expanding expressive works protections to ordinary consumer goods “has put an unwarranted thumb on the scale by extending near-absolute First Amendment protection to ordinary commercial goods” and making it essentially impossible for trademark owners to prevail. (at 5) (INTA’s brief is the only one specifically referenced (in fn. 4 at page 17) in respondent’s opposition to the petition; as one might expect, Jack Daniels’ reply brief mentions several of the amicus briefs specifically, e.g., at page 2, 8-10).

Other amici suggest that the Ninth Circuit has ignored trademark owners’ own First Amendment rights and interests.  Amici American Craft Spirits Association (ACSA), American Distilled Spirits Alliance (ADSA), The Beer Institute, The Brewers Association, Distilled Spirits Council of the United States (DISCUS), and Wine Institute filed a single twenty-five-page brief in support of the petition, arguing that the 9th Circuit’s ruling undercut important industry-self-regulatory discretion aimed at protecting minors and failed to consider the First Amendment rights of trademark owners while requiring “content-based distinctions  among different sorts of infringing speech.” (at 6)  Amici Patagonia and Levi Strauss filed a twenty-eight-page brief in support of the petition, posing the notion that the Ninth Circuit’s position “favoritism for the constitutional rights of the parodist, which the court overstates without adequate analysis,” over the rights of trademark owners like these two companies that have “use[d] their brands to speak to consumers about public issues” through their own purpose-driven brands supported by logos that they use to identify their commercial businesses, but also to convey their respective values that traverse a range of public interests and issues.” (at 1)

Another of the amicus briefs filed in support of the petition focuses on the alleged loss of statutory protections that arguably arise from the Ninth Circuit’s decision.  The Campbell Soup Company filed a twenty-three-page brief in support of Jack Daniels’ petition, noting that the Ninth Circuit decision “will deny trademark owners and consumers the important protections that Congress intended, and statutory text plainly provides, they should have,” namely “a claim of dilution by tarnishment under the TDRA.”  (at 2)

Many of the January amicus filings further the support for Jack Daniels.  Supplementing their original files we see additional briefs from AIPLA, Levi Strauss and Patagonia, the alcoholic beverage industry, INTA, Campbell Soup, and Constellation Brands, most largely repeating previous arguments, though Campbell Soup added emphasis (at pages 3-4, 14-16) of second brief on safety concerns mentioned only in passing in their first brief. 

There are newcomers as well.  For instance, Nike files a twenty-page brief supporting Jack Daniels, arguing the distinction between ordinary consumer products and items of artistic expression should remain applicable, a position also taken by amicus curiae Intellectual Property Owners Association (IPO) in its thirteen-page brief.  Campari, the well-known spirits company that has had connections to a previous important Supreme Court first amendment case  (see Hustler Magazine, Inc. v. Falwell, 485 US 46, 48 (1988), also a thirty-page brief coming down squarely behind Jack Daniels.  (As an aside, Falwell involved the following, which is at least tangentially relevant to the underlying issues being addressed here: “The inside front cover of the November 1983 issue of Hustler Magazine featured a ‘parody’ of an advertisement for Campari Liqueur that contained the name and picture of respondent and was entitled ‘Jerry Falwell talks about his first time.’ This parody was modeled after actual Campari ads that included interviews with various celebrities about their ‘first times.’ Although it was apparent by the end of each interview that this meant the first time they sampled Campari, the ads clearly played on the sexual double entendre of the general subject of ‘first times.’ Copying the form and layout of these Campari ads, Hustler’s editors chose respondent as the featured celebrity and drafted an alleged ‘interview’ with him in which he states that his ‘first time’ was during a drunken incestuous rendezvous with his mother in an outhouse. The Hustler parody portrays respondent and his mother as drunk and immoral, and suggests that respondent is a hypocrite who preaches only when he is drunk. In small print at the bottom of the page, the ad contains the disclaimer, ‘ad parody — not to be taken seriously.’ The magazine’s table of contents also lists the ad as ‘Fiction; Ad and Personality Parody.’”  The Supreme Court used the First Amendment to preclude state law claims against the magazine).

The US Chamber of Commerce comes down on Jack Daniels’ side too, admitting that “businesses, like individuals, would do well to take a joke,” (at 4) but nevertheless noting somewhat apocalyptically that:

giving businesses a free pass to capitalize on hard-earned trademarks—at the expense of both the marks’ owners and the customers who trust those marks and related products—merely by introducing some element of humor into spinoff goods not only would contravene the express terms of the statutes at issue, but would deeply destabilize an economic system that is rightly the envy of the world.

[Chamber Amicus Brief at 4]

A few more amici claim to support neither party.  Amicus curiae The Motion Picture Association, Inc. (“MPA”) supports neither party but does argue in its thirty-three-page brief that the Ninth Circuit misapplied past precedent in this case.  What the MPA argues is for the Supreme “both to affirm the validity of Rogers in appropriate cases and to clarify that Rogers does not apply when the item accused of infringement is a consumer product rather than an artistic work.” (at 5) A group of former judges, government officials and scholars takes much the same position in a sixteen-page brief also filed January 18, 2023, as does the American Apparel & Footwear Association in its seventeen-page brief.

The thirty-seven-page amicus curiae brief submitted on behalf of the New York Intellectual Property Law Association (“the NYIPLA”) calls for “An Assessment More Robust than the Rogers Test Is Required to Assess Infringement Claims for Products,” noting the Ninth Circuit’s approach, “if applied in other cases, risks a collapse of the current trademark law structure that is so important to maintaining both robust discussion and debate as well as fair and nondeceptive trade and commerce.” (at 3, 19),   The NYIPLA’s suggested “more robust test” is really just a demand to apply traditional multi-factor infringement confusion analysis to the challenged product, notwithstanding a claim of expressive intent to be funny or to parody.

In much the same way, a group of intellectual property law professors filed a forty-six-page brief calling for a new test. This is the most ambitious of the amicus briefs, and therefore the most interesting for us to discuss at length.

Before these professors got into such merits, they directly on page 1 of their brief challenged the apocalypticism noted above, stating that:

The First Amendment is under attack by brand owners that lack a sense of humor, want to monopolize discussion about their brands, and exaggerate the harm expressive references cause to their trademarks. Contrary to their Chicken-Little cries, their brands will not be eviscerated by humor, commentary, criticism, or reference. For that reason, absent explicitly misleading speech or pretextual uses that are clearly gratuitous and not really about expression at all, respect for the First Amendment requires that their trademark rights yield to the right to free expression.

Interestingly, and to my mind appropriately, the professors expressly suggest as part of their recommended approach dropping any distinction found or read into Rogers between artistic expressive works and ordinary consumer goods, arguing that “[d]istinguishing between a ‘consumer good’ or ‘commercial product’ and an expressive good is untenable and is contrary to this Court’s precedents.” (at 21)  Indeed, according to the professors, what qualifies as a “’commercial good’ is not a cognizable First Amendment category.” (at 26).

The professors then go on to argue that Rogers tests should be turned into a new test to make it “administrable,” (at 31) stating the new test to state:

When a defendant makes a prima facie showing that the work accused of trademark infringement is a work of expression subject to First Amendment protection, courts should presume that Lanham Act liability is precluded. A plaintiff can rebut that presumption through a showing that the defendant’s use of the plaintiff’s mark is either explicitly misleading or clearly gratuitous (these two concepts are fleshed out below). If the plaintiff carries that burden, the court should apply the standard Lanham Act doctrine to determine whether the work is subject to liability, while still balancing the public’s interest in free expression with the public’s interest in avoiding consumer confusion.

In considering whether a defendant’s use of another party’s trademark is “explicitly misleading,” courts should consider whether the defendant made a false statement as to the source of the work (which is the test used in the Ninth Circuit) rather than merely considering whether the use is implicitly or likely misleading (which has been done in other circuits that require only a “particularly compelling” likelihood of confusion to satisfy the second Rogers prong). In considering whether a defendant’s use of another’s mark is “clearly gratuitous,” courts should consider evidence regarding whether the use has or lacks an apparent good-faith nexus to the defendant’s purported protected expression…. Where, on the other hand, the claimed expression is a gratuitous reference to a brand that merely trades on the good will or recognizability of a trademark without any apparent good-faith rationale for such use … courts should deny the defendant’s First Amendment defense and conduct a standard trademark infringement analysis.

[Professors’ amicus brief at 3-4]

This test, and abandoning any protection for especially expressive works seems like a good start:

Accordingly, the threshold question for whether a work accused of trademark infringement is subject to heightened scrutiny should be whether a reasonable person would perceive either (a) that a work is inherently a form of noncommercial expression (such as a novel or painting) or (b) that the work (whether a t-shirt, dog toy, or sneaker) contains noncommercial expression that is inextricably intertwined with the functional or commercial elements of the work, even if a reasonable person could not discern the precise meaning of the expression. Cf. Campbell [v. Acuff-Rose Music], 510 U.S. [569,] 583 [(1994)](“First Amendment protections do not apply only to those who speak clearly” (quoting Yankee Publ’g [Inc. v. News America Publishing, Inc.], 809 F. Supp. [267,] 280 (SDNY 1992)]).

[Professors’ amicus brief at 27]

While a good start, it has in some ways traded the categorical distinction between expressive works and ordinary products for an anecdotal, case-by-case appraisal of whether “the work accused of trademark infringement is a work of expression subject to First Amendment protection.” (Emphasis added).  The good start doesn’t quite get us to established criteria for making that call, though the professors try.

The professors look to have the courts “distinguish between commercial expression (such as pure advertising) and noncommercial expression (such as political, artistic, or religious speech, regardless of whether that speech is sold).” (at 26)   But, it is unclear that is any purity left in any communication processes (as UNESCO recognized as far back as 1978, see Finding 118 of its Interim Report On Communication Problems in Modern Society), and I have noted here before things like religion are big business around the world.  In such a world, it is not clear how helpful the professors’ test is, and how it moves those applying the test from a role equivalent to the art critic or media reviewer.

First off, the test, perhaps appropriately, tilts in favor of free speech, noting that “[w]henever the commercial aspects of a work are intertwined with artistic content,” the professors suggest that “the First Amendment dictates that the trademark-using speech must be considered “noncommercial” (i.e., speech that does more than propose a commercial transaction, as pure advertising does) and thus subject to full First Amendment protection.” (at 26).  They fear that otherwise:

nesting a likelihood-of-confusion analysis within a First Amendment analysis overdetermines the conclusion and necessarily burdens First Amendment interests, because a test accounting for a purported infringer’s free speech interests need be applied only when there is some likelihood of consumer confusion, or else trademark law would be sufficient to resolve the case… Requiring that the plaintiff merely show a heightened degree of consumer confusion would render both the First Amendment and artists’ rights to comment on our commercial culture a nullity. (at 35)

For them, “asking courts to assess whether a purported infringer’s use of a trademark is artistically relevant’… arguably requires courts to serve as art critics, considering a work’s artistic merit or probing its hidden meaning—which is a role courts are ill-suited to perform.”  (at 36).  Though the professors later suggest, as if it is a difference in kind rather than degree that “courts instead probe the nexus between a defendant’s use of another party’s mark and its expression by asking whether the use is ‘clearly gratuitous,’” (at 37), that to me is asking the same question—does the expression relate to making the point.  “Irrelevant” and “gratuitous” are both synonyms for “unnecessary.”  Thus, a test asking whether something is artistically irrelevant is not a different test than the Rogers’ test asking if it is artistically relevant. 

That remains in the realm of the art critic.  Did the effort at architectural minimalism “[k]eep the design simple, [and] remove the gratuitous or unwanted details”? (Emphasis added)   Even if you loved Van Gogh’s Starry Night, did you agree with the critique of the Immersive Van Gogh exhibit that “[t]here are gratuitous aspects as well, like a lonesome live-action shot of a grassy meadow that serves no discernable purpose”? (Emphasis added)  Whatever one thinks of Warhol’s Campbell Soup message, would you agree that, as to his Oxidation Series, that “[t]he gratuitous sex in this series has situated the paintings among the artist’s least regarded work, despite their connection to his signature style and technique”? (Emphasis added) And what if the message was clouded by such inclusion or the message actually distracted from—isn’t the artist entitled to muddle or fail without facing liability? The First Amendment does not protect only the successful minimalist, the well-edited, the artfully terse, or the unambiguously clear. 

So, as we began, we end.  There are many issues to be addressed and considered, some landmines to dance around for the parties, the Court, and its “friends.”  And there is a whole lot to chew on (in addition to the pet’s plaything that started this whole controversy).  I asked a well-read source for help on how to conclude this article, and got a cogent response:

How should I write concluding paragraph on why people feel outcome of Supreme Court case of Jack Daniel’s Properties, Inc., v. VIP Products LLC, is so important?

The outcome of the Supreme Court case of Jack Daniel’s Properties, Inc. v. VIP Products LLC is important because it has the potential to set a precedent for how trademark law is applied to the use of famous trademarks on non-competing goods. The decision in this case could have a significant impact on how trademark holders are able to protect their intellectual property and prevent dilution of their brands. Additionally, the outcome of this case could also have an effect on the ability of small businesses to use famous trademarks in ways that are not likely to cause consumer confusion. Overall, this case has the potential to shape how trademark law is applied in the United States for years to come.

Thanks for the surprise ending, ChatGPT—my initial assessment may have been a bit harsh, though you still have a good deal to work on, as James Romoser has explained well in the legal context.… Still, I think the Kraken comes now—help us.

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