On Monday, November 21, 2022, the United States Supreme Court granted a petition for a writ of certiorari in Jack Daniel’s Properties, Inc. v. VIP Products LLC. The lawsuit seeks to clarify whether VIP’s Jack Daniel’s themed dog-toys are protected from trademark infringement claims due to VIP’s First Amendment interest in using Jack Daniel’s trademarks on the toys.
The two questions presented before the Supreme Court are (1) “[w]hether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims” and (2) “[w]hether humorous use of another’s mark as one’s own on a commercial product is ‘noncommercial’ under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act.”
Jack Daniel’s “trademarks and trade dress define its iconic brand. . . Consumers have associated Jack Daniel’s brand with JACK DANIEL’s®, OLD NO. 7®, and the distinctive square shape of its whiskey bottle for more than a century.” VIP created a “Bad Spaniels” dog toy using Jack Daniel’s marks and trade dress that mimics the whiskey bottle. The dog toy also includes poop humor. The U.S. District Court for the District of Arizona found that the toy “was likely to confuse consumers and tarnish Jack Daniel’s marks.” The court ruled in favor of Jack Daniel’s for trademark infringement and dilution by tarnishment, and entered an injunction preventing VIP from selling the toy.
On appeal, the U.S. Court of Appeals for the Ninth Circuit held on the trademark infringement claim that “the Lanham Act’s likelihood-of-confusion test does not account for VIP’s purported First Amendment interest in making poop-themed jokes at Jack Daniel’s expense.” The appeals court “engrafted a two-part test on top of the Lanham Act analysis, requiring Jack Daniel’s to show on remand that VIP’s use of Jack Daniel’s trademarks and trade dress either is ‘not artistically relevant to the underlying work’ or ‘explicitly misleads consumers as to the source or content of the work.'”
Jack Daniel’s petition for certiorari asserts that “the Ninth Circuit’s test unjustifiably protects even intentionally misleading trademark use and elevates the infringer’s supposed free-speech interest above the mark holder’s.” The petition points to rulings by the Second Circuit, Seventh Circuit, and Eighth Circuit “expressly reject[ing] a rule giving First Amendment protection to humorous or parodic use of a mark in these circumstances.” Those courts “instead apply the [Lanham] Act’s traditional likelihood-of-confusion test, in which humor is one factor relevant to the likelihood of confusion.”
As to the trademark dilution claim, the Ninth Circuit ruled that “VIP’s poop humor rendered its commercial use of Jack Daniel’s trademarks as VIP’s own marks ‘noncommercial’ and thus immune from dilution liability under a separate, more general exclusion.” Jack Daniel’s petition asserts that “[t]he Ninth Circuit’s decision gives copycats free license to prey on unsuspecting consumers and mark holders. . . [a]nd mark holders will be powerless to stop them, because infringers will funnel litigation to the Ninth Circuit, as VIP did here.” The petition points to rulings by the Second Circuit, the Fourth Circuit, and the Trademark Trial and Appeal Board holding that “in cases involving purported parodies, the parody exclusion specifically governs whether the defendant is exempt from dilution liability.” The petition also highlights the Fourth Circuit’s use of a multi-factor test to determine noncommercial use.
Additional Reading
High Court to Review Speech Test in Jack Daniel’s Trademark Case, Bloomberg Law (November 21, 2022)
U.S. Supreme Court Docket in Jack Daniel’s Properties, Inc. v. VIP Products LLC
Petition for a Writ of Certiorari in Jack Daniel’s Properties, Inc. v. VIP Products LLC
VIP Products LLC v. Jack Daniel’s Properties, Inc., No. 18-16012 (9th Cir. 2020)
Photo Credit: Maxim Apryatin / Shutterstock.com