By Madeline Olds, Staff Writer
On March 22, 2023, the country’s largest whiskey company, Jack Daniel’s, will head to the Supreme Court in a challenge against VIP Products LLC, a dog toy company, over one of its dog toys.[1] The question for the Supreme Court is whether the humorous use of another’s trademark as one’s own commercial product is subject to the Lanham Act’s likelihood-of-confusion analysis or heightened First Amendment protection?[2]
VIP Products LLC, a company in Tennessee, created a plastic dog toy that resembles Jack Daniel’s iconic whiskey bottle.[3] The toy was labeled “Bad Spaniels” and instead of “Old No. 7” and “Tennessee Sour Mash Whiskey” like that on Jack Daniel’s bottles, it says “The Old No. 2 on your Tennessee Carpet.”[4] Jack Daniel’s saw the product and filed suit against VIP Products LLC.[5] The district court granted summary judgement and held that Jack Daniel’s trade dress and bottle design were entitled to trademark protection and that VIP was not entitled to either fair-use or First Amendment defenses.[6]
The case then went to the United States Court of Appeals for the Ninth Circuit in March 2020.[7] The Ninth Circuit ruled that the dog toy passed the Rogers Test, a test established in Rogers v Grimaldi, which states that a trademark can be used without authorization as long as it meets a minimal level of artistic expression and does not explicitly mislead consumers.[8] The dog toy, the Ninth Circuit stated, had dog related alterations and was therefore a humorous parody.[9]
On remand, the district court held that Jack Daniel’s failed to show lack of artistic relevance and explicit misleading.[10]These decisions led Jack Daniel’s to appeal to the Supreme Court, arguing that “the Ninth Circuit erroneously grafted the atextual two-part test for First Amendment protection onto the Lanham Act.”[11] Stating this, Jack Daniel’s argued that the Ninth Circuit granted humorous use of a trademark heightened protection, which was not Congress’s intent, and that the likelihood-of confusion test should have been used instead.[12]
VIP Productions LLC argued that the Ninth Circuit did not err in its ruling.[13] The issues are as follows for the Supreme Court to consider: (1) whether 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, 15 U.S.C. § 1125(a)(1), or instead receives heightened First Amendment protection from trademark-infringement claims; and (2) whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” and thus bars as a matter of law a claim of “dilution by tarnishment” under the Trademark Dilution Revision Act, 15 U.S.C. § 1125(c)(3)(C).[14]
The Lanham Act, 15 U.S.C. § 1125, was enacted by Congress in 1946, to provide a national system of trademark registration and protect the owner of a federally registered mark against the use of similar marks, if such use is likely to result in consumer confusion, or if the dilution of a famous mark is likely to occur.[15] The two basic requirements for a mark to be eligible for trademark protection are it must be in use in commerce and it must be distinctive.[16] Use in commerce means that it must be in use at the time of the application is filed unless there is a good faith intent to use the mark in commerce at a future date.[17] The distinctive requirement is that the mark must be identifiable and a distinguishable particular good as emanating from one producer or source, not another.[18] To establish a violation under the Lanham Act, the plaintiff must demonstrate that the plaintiff has a valid and legally protectable mark, the plaintiff owns the mark, and the defendant’s use of the mark to identify goods or services causes a likelihood of confusion.[19]
The Supreme Court previously rejected Jack Daniel’s suit against VIP Products LLC in January 2021.[20] However, the Arizona federal district court encouraged the company to seek a new petition.[21] The petition was granted in November 21, 2022.[22] There are many opinions as to the Jack Daniel’s case and how it will effect trademark in the future.[23] The Biden administration backed Jack Daniel’s in a brief filed January 19, 2023 in a brief written by the U.S. Solicitor General.[24] However, the decision by the Ninth Circuit Court, and the possibility if it being adopted by the Supreme Court, concerned many lawyers as to the application of the Rogers test.[25]
Ultimately, this case will determine the line between humorous parody in products and infringement of trademark.
[1] https://www.oyez.org/cases/2022/22-148
[2] Id.
[3] Id.
[4] Id.
[5] https://www.naag.org/attorney-general-journal/supreme-court-report-jack-daniels-properties-inc-v-vip-products-llc-22-148/
[6] Id.
[7] https://news.bloomberglaw.com/ip-law/high-court-to-review-speech-test-in-jack-daniels-trademark-case
[8] Id.
[9] Id.
[10] https://www.naag.org/attorney-general-journal/supreme-court-report-jack-daniels-properties-inc-v-vip-products-llc-22-148/
[11] Id.
[12] Id.
[13] Id.
[14] https://www.scotusblog.com/case-files/cases/jack-daniels-properties-inc-v-vip-products-llc-2/
[15]https://www.law.cornell.edu/wex/lanham_act#:~:text=The%20Act%20provides%20for%20a,mark%20is%20likely%20to%20occur.
[16] Id.
[17] Id.
[18] Id.
[19] Id.
[20] https://www.reuters.com/legal/litigation/biden-admin-backs-jack-daniels-supreme-court-dog-toy-trademark-fight-2023-01-19/; https://news.bloomberglaw.com/ip-law/high-court-to-review-speech-test-in-jack-daniels-trademark-case
[21] Id.
[22] Id.
[23] Id.
[24] Id.
[25] Id.
