Co-authored with Julian Cornelius
On June 8, the United States Supreme Court handed down a surprisingly decisive ruling on trademark law and its relationship with First Amendment rights. The Court found that free speech rights did not protect a manufacturer of dog toys, which mimicked a bottle of Jack Daniels, against an action for trademark infringement.
The case has provoked widespread discussion among IP lawyers across the world regarding similar cases in other jurisdictions.
The Jack Daniel’s Case
As has been reported previously, in Jack Daniel’s Properties v. VIP Products, the Supreme Court ruled that VIP’s “Bad Spaniel’s Silly Squeaker”, which resembled the famous Jack Daniel’s whiskey bottle both in terms of shape and style of packaging, was infringing.
The decision, written by Justice Kagan, reaffirmed that the basic purpose of trademark law is the question of whether the public is likely to be confused by the product. Justice Kagan focused specifically on the purpose for which the trademark was used; in this case, “as a designation of source for [its] own goods”. According to Kagan’s ruling, no First Amendment defense may be raised in such circumstances.
While the case is an important win for companies that want to stop others from mimicking their products, it is important to remember that the decision has a narrow application. The Justices did not go so far as to overturn the famous Court of Appeals precedent (Rogers v. Grimaldi 1989), focusing the ruling instead on the facts of the case (i.e., in cases where a trademark is used as a designation of source for [its] own goods”).
The case will now return to the lower courts for further analysis.
What if This Had Happened in Brazil?
The Brazilian scenario is somewhat different from the United States. Both countries have different systems for protecting intangible rights – in particular, the value of freedom of expression.
This right is protected by the Brazilian legal system and the Industrial Property Law. But, unlike in the United States, the great challenge is to harmonize competing fundamental rights – and to do so, there is no standard regulation; instead, courts evaluate the issues on a case-by-case basis.In terms of intellectual property rights, “free riding”, in which a certain company obtains an undue commercial advantage, is prohibited.
The Industrial Property Law (9.279/1996) deals with the maintenance of the reputation of trademarks and the prohibition of their use by third parties (i.e., those not authorized by the holder of the registration) in publications for profit or any use that may cause confusion in the consumer public. However, in respect of the origin of products or services, the legislation does not deal directly with the relationship between trademarks and parody / humor.
Although the law has provisions that are used as attempts to protect companies and serve as bases for decisions of the Brazilian Patent and Trademark Office (BPTO), it is not straightforward. Examples include Articles 124, XIX, XVI, XVII, 130, III, of the Industrial Property Law, among others.
Although there is a lack of greater legal foresight on the subject, the Brazilian judiciary, as well as the BPTO, have issued some interesting decisions on the subject.
In 2017, the Sao Paulo Court of Justice (TJSP) issued a decision recognizing the infringement of the trade dress used by the famous biscuit company, Maizena. The popular line, “the biscuit,” had been reproduced in the branding of the hairtreatment product Alisena of Mueriel Cosmetics. Although the companies are not direct competitors, the Court understood that it was a case of parasitic exploitation.
In addition, in 2021, the case of João Andante Cachaça and the parody it made in reference to Johnnie Walker Whisky, from Diageo, came before the Brazilian Superior Court of Justice (STJ). The claim had been dismissed at the trial court level, but the Sao Paulo Court of Justice (TJSP) later concluded that the João Andante trademark is a mere translation and stylized reproduction of the Johnnie Walker trademark.
The STJ, in turn, found that the case involved an unauthorized parody, which generated unjust enrichment to the owners of cachaça, who would have tried to promote business based on the prestige of the brand of others in parasitic association.
In other types of actions, it can be challenging to adopt measures against companies from different segments and a strong strategy adopted by brands is to use the highly renowned registration designation, which can protect a single trademark in 45 classes and goods and services. Thus, it is simpler to take any action at the administrative level.
Thus, while Brazil recognizes the importance of freedom of expression, there is no standard regulation addressing the relationship between trademarks and parody/humor. In situations of competing fundamental rights, these will be looked at on a case-by-case basis, aiming to prevent unfair commercial advantage and consumer confusion.
Recent decisions by Brazilian courts also demonstrate a growing recognition of trademark infringement in cases involving parody, and the need to protect the rights of original brand owners. For those interested in the Brazilian market, it is worth keeping in mind that comprehensive and proactive trademark strategies can play a key part in deterring potential infringers across diverse sectors.
Article published in IPWatchdog.