DeSantis Taunt in Disney Typeface Tempts Trademark Punchback

Baseball caps promoting Ron DeSantis for president using Disney’s iconic—and trademarked—script add intellectual property to the combustible standoff between the Florida governor and the state’s most recognizable corporate citizen.

Whether the caps—sold at a DeSantis book tour event and depicting his name in the typeface over “President 2024" in block text—raise trademark liability could turn on how the US Supreme Court interprets poop jokes on a dog toy. It also would require tying the hat sales to his operation.

Walt Disney Co.—which has already sued DeSantis over alleged retaliation for its public criticism of his policy—could have a claim, trademark attorneys and professors say. But the First Amendment looms large when political speech comes into play, especially if DeSantis could successfully frame the hats as criticizing Disney.

A litany of factors could prove important, if not decisive, as courts have taken varied approaches to weighing free speech against trademark rights when purported parody or criticism is involved. Some courts jump straight to a free speech test, while others incorporate such concerns into trademark law’s standard likelihood of consumer confusion analysis.

The Supreme Court could provide guidance any day, as attorneys await its decision over whether whiskey bottle-shaped “Bad Spaniels” dog toys infringe Jack Daniels Properties LLC’s trade dress. However that shakes out, courts will likely still have leeway as they seek to delineate concepts like parody, criticism, expression, and confusion.

Baseball caps promoting Florida Governor Ron DeSantis sit on a table before a book tour event at the North Charleston Coliseum on April 19, 2023, in North Charleston, South Carolina.

Photo by Sean Rayford/Getty Images

While political criticism of a major corporation would seem to clearly fall under the First Amendment’s umbrella, intent isn’t a decisive factor, law professors said. Anyone unaware of the feud between DeSantis and Disney may perceive the hats as signaling mutual support and endorsement, the kind of confusion at the heart of trademark law.

“If you take out the political stuff, it’s a slam dunk case for Disney,” IP law professor Jake Linford of Florida State University said. “Does the political aspect change things? The answer is a solid ‘maybe.’”

IP law professor Christine Haight Farley of American University said “there are a million different roads courts can take” in free speech cases. She also said that even though the criticism of Disney is only implicit, the hats fall in a “zone of political speech.”

“This is an interesting theoretical question: ‘what would trademark law say in a dispute like this?’ Disney would be wise to not step in it,” Farley said. “There is a case to be made there is a message here: ‘Join me, we’re going after Disney, I’m trying to poke them in every way.’”

Press contacts for the Florida governor’s office and DeSantis’ book publisher, HarperCollins, didn’t respond to requests for comment.

Chocolate, Porn, and Nukes

Disney and DeSantis have already dropped the gloves in Florida federal court. The company’s April 26 complaint says DeSantis threatened to void land-use contracts over its criticism of the “don’t say gay” bill he signed into law, restricting classroom instruction on sexual orientation and gender identity.

DeSantis also moved to revoke the company’s special tax and self-governing privileges, which the company has called unconstitutional retaliation for its criticism.

The suit alleged that DeSantis warned Disney’s then-CEO Bob Chapek to stay quiet about the legislation, saying “it’s not going to work out well for you.” quoting an interview with DeSantis. DeSantis said in that interview that Disney was free to take a stance, but not to “force us all to subsidize their activism.” A DeSantis-appointed board sued Disney May 1 for trying to ward off the board’s efforts to govern park operations.

If Disney were to bring a trademark suit, DeSantis wouldn’t be the first politician sued for stylizing his name to invoke a company. A Maryland federal court enjoined county commissioner candidate Steve Hershey from using political signage featuring Hershey Co. trade dress. The candidate backed down after losing a bid to dismiss the candy company’s case.

But the signs in that case didn’t comment on Hershey’s brand, implicitly or otherwise. Courts forced to balance First Amendment interests have taken differing approaches—some of them still favorable to brands.

The US Court of Appeals for the Second Circuit in 1979 upheld an injunction barring sale or exhibition of the pornographic movie “Debbie Does Dallas” featuring the Dallas Cowboys cheerleaders’ trademark-protected uniforms. It said trademark rights “need not yield to the exercise of First Amendment rights under circumstances where adequate alternative avenues of communication exist.”

That “alternative avenues” test was also a Minnesota district court’s rationale in 1998 for enjoining use of “Dairy Queens” as a title for the movie later renamed “Drop Dead Gorgeous.” A split Eighth Circuit panel applied the standard as it found merchandise protesting nuclear proliferation—"Sponsored by Mutant of Omaha Nuclear Holocaust Insurance Co."—infringed Mutual of Omaha’s word and logo marks.

Farley said the “alternate avenues” test may be the “least favored route,” and doubted a court would rule similarly today. But it still highlights the paths brand owners have found to overcome First Amendment defenses.

Eye of the Beholder

On the other end of the spectrum are courts that have broadly applied the Second Circuit’s 1989 test from Rogers v. Grimaldi, as the Ninth Circuit did in the Bad Spaniels case.

The test allows trademark use in expressive works if it’s artistically relevant and not explicitly misleading. Justices hearing the Bad Spaniels oral arguments in March showed skepticism to both trademark and free speech extremes, and they appeared inclined to narrow the Rogers test regarding commercial products, or ditch it altogether.

The Fourth Circuit went in yet another direction to clear a different pun-based dog toy. The court in 2007 held the Chewy Vuiton toy was a parody during the course of a likelihood of confusion analysis.

Supreme Court watchers and IP attorneys are waiting for the justices’ decision on whether “Bad Spaniels” dog toys infringe Jack Daniel’s trademarks or are protected by the First Amendment.

Illustration by Jonathan Hurtarte/Bloomberg Law

Defining parody generates controversy in general. The Fourth Circuit found the Chewy Vuiton dog toy satisfied the definition by invoking the brand but also clearly indicating the irreverent depiction is not the original. That court also said the toy pokes fun at the expensive Louis Vuitton handbags that, typically, one wouldn’t let a dog chew.

Jack Daniel’s and its backers argued to the high court that merely making crass jokes doesn’t provide immunity from infringement claims. Justice Elena Kagan appeared to agree, asking “what’s the parody” and whether any use of a large company’s mark in a gag product counts.

With DeSantis’ Disney hats, there would be a question of how the use is perceived, IP law professor Jacqueline Lipton of the University of Pittsburgh said.

“I’m not even sure if that’s a parody, but it’s clearly a joke; it’s about poop and dogs, and not about whiskey,” Lipton said of Bad Spaniels. “This, it’s a subtle political message. You’d have to know the context of the fight between Disney and DeSantis to get the joke.”

What share of people have to understand the context also represents a debated threshold. Infringement doesn’t necessarily require a huge share of consumers to be confused, but Farley said that some people not understanding shouldn’t shut down First Amendment protections either.

”You don’t have to judge the speech by the lowest common denominator,” Farley said. “It doesn’t have to be a joke everybody gets. It doesn’t have to be a critique everybody gets to be free speech-worthy.”

IP law professor Lisa Ramsey of the University of San Diego said the hat “seems like pure political speech.” But she said a case could survive a motion to dismiss, adding: “I don’t know what doctrine the court would apply.”

Ramsey and Farley co-authored a 2023 paper, ”Raising the Threshold for Trademark Infringement to Protect Free Expression,” that proposes a uniform, holistic fair use trademark test that incorporates a standard based on how a reasonable person would react.

Liption said she’s “sort of waffling” on how a court would treat DeSantis’ hats, but agreed he stands on fairly firm First Amendment ground.

“I think there’s a way Disney could frame it in front of a sympathetic judge and get a decent hearing,” Lipton said.

“But it’s political, it’s free speech. He is criticizing Disney as part of his whole shtick.”