Liberty VS Infringement

 

The recent Jack Daniel’s TM Infringement Case once again has raised the question of where the distinction between Liberty and Infringement be drawn.

The case involves infringement of Jack Daniel's TM by VIP Products that made a dog accessory (a chew toy) named as Bad Spaniels along with The Old No.2, on your Tennessee Carpet in it, that resembles the Label, Shape of Bottle, TM of Jack Daniel’s that include Jack Daniel’s along with Old No. 7, Tennessee Whiskey. It’s basically more of a Trade Dress & Shape of Bottle Infringement Case. The Shape of bottle & Shape of the dog toy is same. Label is visually same. Trade Dress seems similar. But yes, both word mark Jack Daniel’s & Bad Spaniels seems different.

When and where the Liberty (s)would outweigh Infringement; and when & where Consumer Confusion (w)should outweigh Freedom of Expression including Artistic Freedom; the whole issue is revolving around these two principles awaiting to be analyzed. Albeit, already been answered in Campbell v. Acuff-Rose Music (which concluded that parodies aren’t infringement if involved artistic features) and in Rogers v. Grimaldi (which is more restricted to: the title of movie isn’t infringing rights of publicity or privacy of any so-called celebrity, if the film itself isn’t misleading and not depicting the true events of such any person, or, (mis)using the names of them for commercial aspects and is further wholly unrelated).

Parodies or Spoof require copying of some part of the Original Work Whereas Satire could be independent of the Original Work. Gulliver’s Travel!

1.Are the goods or services same or, fall in same class of goods between Jack Daniel’s VS VIP?

A. No! 

2.Can Shapes be Trademarked?

A. Yes, subject to if it isn’t functional & is distinctive!

3.Is Jack Daniel’s a Well-Known Brand?

A. Yes!

4.Can the origin of goods be interpreted originated from the same location?

A. Yes, it’s Tennessee.

5.Are the goods sold via same trade channels?

A. No!

6.Has the toy tarnished the reputation of Jack Daniel’s by making reference to No. 2 (poop)?

A. Jack Daniel’s thinks so!

7.Is the entire trade dress or trademark similar?

A. Nope! Only the Shape of the Bottle & the Label, but not the Wordmark Bad Spaniels & Jack Daniel’s (my assumption).   

8.Is there any message given in that dog toy via free speech by VIP products?

A. No, as it’s merely a trade product.

9.Is Jack Daniel’s a movie or a book?

A. No!

10.Can a person who reviews films or products, also sell its content by infringing it?

A. No! Max they can review!

11.Is reviewing or critical analysis same as selling any product via trade channels?

A. No! Unless proven otherwise.

12.Can Artistic Expressions be considered in Trademark?

A. Probably Not, unless if there’s any message via free speech for public at large is proven.

13. Is Jack Daniel’s the Prior User?

A. Yes!

Now:

1.Is there any consumer confusion of Jack Daniel’s could be the Owner of the parody dog toy also or is it wholly unrelated?

2.Can the Spoof or Parody argument as contended by VIP Products protected under Free Speech or Fair Use be held Valid? Or should be considered as the case of Infringement? Are retailers or consumers being deceived? Or, is Liberty outweighs Consumer deception in the present case?

If in case VIP Products has infringed Jack Daniel’s mark, then too would’ve several products being sold that carries names of the Leaders’, Political Party symbols etc. But again, the elected Leaders’ & Parties are representative of Democracies, & Not any Private Company. So, is it right to Infringe to Spoof or make Parody of any Private (Limited) Company’s Trademark? Should or Shouldn’t be, or maybe unless it has affected the public trust at large, for eg., VW Software case w.r.t. pollution emissions, Enron etc. Then what about several parodies/spoofs/roasting on YT of many companies, let’s say of Apple? These Users’ too are being commercially paid for their Fair Use work (it seems)! And has Jack Daniel’s done anything affecting public at large? Fair Use usually include non-commercial use, and if commercial, should’ve artistic relevance in it that should be proven. And just alike the reputation of any individual via Performance Rights is protected as a constitutional remedy against Moral Distortion; then should the reputation of any Company be also protected under Spoofing or Parodying of any Trademark too? Live Review or Demonstration is different from Spoofing & Selling! Can someone who isn’t, let’s say a Windows admirer; eventually Spoof or make Parody of Microsoft’s brand by selling any product (not being software itself), and let’s say, under its own trademark named as Microflaccid with the Windows logo on it, be considered as Liberty? Can the trademark holder who holds exclusive right to produce, reproduce, sell, derive, make copies, should also be protected against Parodies/Spoofs too, if there’s any trade involved in that parody?       

Thus, only two questions ensue in the case. Whether the reputation of Jack Daniel’s being tarnished and further, whether the trade dress has been infringed by VIP Products or not!

If Jack Daniel’s is proven correct, then even most of the likes of the YT Users would’ve to close their accounts before being sued. And if VIP is proven correct, then it needs to be explained, as what political (or not) message under Free Speech or Liberty being given whilst selling a Commercial Product that possibly infringes a trademark!

P.S. -> Neither I drink, nor own any dog!

© Pranav Chaturvedi