Comment by dghlsakjg
2 days ago
You misinterpreted the outcome of that case. The ninth circuit ruling was in favor of VIP. The Supreme Court overturned that ruling and said the lower court needed to discard the rogers test as exculpatory for VIP/BS.
I’ll use a direct quote from your own source to explain how the actual ruling ended up losing the case for BS:
…the district court found that it nevertheless dilutes the fame and distinctiveness of the whiskey maker’s reputation, thereby still running afoul of the Lanham Act’s anti-dilution provisions. The amended order follows the Supreme Court’s decision ending the application of the more liberal Rogers First Amendment test in trademark cases involving expressive works used as source identifiers. In doing so, while finding that the parody of the “Bad Spaniels” dog toy decreased the likelihood of confusion with Jack Daniel’s by modifying the analysis of certain factors in a light more favorable to VIP, the district court ultimately found VIP’s parody of the famous whiskey brand to be a double-edged sword that contributed to finding dilution by tarnishment. /quote
The Supreme Court case said that because they were using a trademark as a brand identifier they couldn’t argue for a rogers test exemption. In other words if you use someone else’s trademark, even as a riff or joke, in your trademark, the bar is much higher. L’Eggo my Eggroll is doing exactly that.
Your argument that “In the food truck case, clearly they are using it as their own brand identifier (so it's analogous to Bad Spaniels)” perfectly encapsulates why this is a violation once you grok the outcome of the court case. Bravo for phrasing it so succinctly.
But it's not tarnishment. In the BS case, they found that it wasn't infringement, but that they were using it in a way that would cause reputational damage (also dubious, but sure). Here it would seem the claim that it causes reputational damage is even more tenuous; the food truck is not portraying them in any kind of negative light. In fact, an even better fit is likely the Chewy Vuitton toys[0]:
> While it is true that finding a mark to be strong and famous usually favors the plaintiff in a trademark infringement case, the opposite may be true when a legitimate claim of parody is involved. As the district court observed, "In cases of parody, a strong mark’s fame and popularity is precisely the mechanism by which likelihood of confusion is avoided."
> In a similar vein, when considering factors (v) and (vi), it becomes apparent that Haute Diggity Dog intentionally associated its marks, but only partially and certainly imperfectly, so as to convey the simultaneous message that it was not in fact a source of LVM products. Rather, as a parody, it separated itself from the LVM marks in order to make fun of them.
In the BS case, SCOTUS explicitly noted that parody is a factor in determining confusion and therefore infringement[1]:
> But a trademark’s expressive message—particularly a parodic one, as VIP asserts—may properly figure in assessing the likelihood of confusion ... So although VIP’s effort to ridicule Jack Daniel’s does not justify use of the Rogers test, it may make a difference in the standard trademark analysis. Consistent with our ordinary practice, we remand that issue to the courts below.
And then the ultimate conclusion was that it was not infringement. SCOTUS ruled the lower court had taken an incorrect shortcut, but ultimately the answer (on the infringement question) was the same for basically the same reason.
[0] https://www.ca4.uscourts.gov/Opinions/Published/062267.P.pdf
[1] https://www.supremecourt.gov/opinions/22pdf/22-148_3e04.pdf