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. 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?
VIP Products LLC, a company in Tennessee, created a plastic dog toy that resembles Jack Daniel’s iconic whiskey bottle. 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.” Jack Daniel’s saw the product and filed suit against VIP Products LLC. 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.
The case then went to the United States Court of Appeals for the Ninth Circuit in March 2020. 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. The dog toy, the Ninth Circuit stated, had dog related alterations and was therefore a humorous parody.
On remand, the district court held that Jack Daniel’s failed to show lack of artistic relevance and explicit misleading.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.” 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.
VIP Productions LLC argued that the Ninth Circuit did not err in its ruling. 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).
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. 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. 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. The distinctive requirement is that the mark must be identifiable and a distinguishable particular good as emanating from one producer or source, not another. 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.
The Supreme Court previously rejected Jack Daniel’s suit against VIP Products LLC in January 2021. However, the Arizona federal district court encouraged the company to seek a new petition. The petition was granted in November 21, 2022. There are many opinions as to the Jack Daniel’s case and how it will effect trademark in the future. The Biden administration backed Jack Daniel’s in a brief filed January 19, 2023 in a brief written by the U.S. Solicitor General. 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.
Ultimately, this case will determine the line between humorous parody in products and infringement of trademark.
 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