More Bark Or Bite? U.S. Supreme Court To Decide Whether The First Amendment Has The Teeth To Protect Whiskey Bottle Shaped Dog Toy Maker From Jack Daniel's Lanham Act Claims

• Published date: 06 December 2022
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Trademark, Trials & Appeals & Compensation
• Law Firm: Crowell & Moring
• Author: Ms Preetha Chakrabarti, Joachim Steinberg and Katie Johns

On November 21, 2022 the U.S. Supreme Court agreed'after passing on the issue once before'to hear Jack Daniel's (JDPI) challenge to the Ninth Circuit's ruling in VIP Prods. LLC v. Jack Daniel's Props, where the Ninth Circuit affirmed without opinion the district court's grant of summary judgment to VIP and the dismissal of JDPI's trademark infringement claim,¹ on the grounds that JDPI could not satisfy either prong of the Rogers test. The Rogers test balances free expression under the First Amendment against the trademark protections of the Lanham Act. The Supreme Court granted certiorari on the questions of whether parody uses of another's mark receive First Amendment protection from liability under the Lanham Act and whether parody is exempt from claims of dilution by tarnishment under 15 U.S.C. ' 1125(c)(3)(C). The decision could clarify the balance between trademark and the First Amendment, an issue that has long-confounded practitioners.

The Case Below

JDPI produces Jack Daniel's, a brand of Tennessee whiskey bottled for over 150 years. VIP manufactures dog toys, some of which poke fun at famous beverage brands. In 2013, VIP introduced its latest creation: the "Bad Spaniels," a rubber squeaker dog toy that resembles the shape and color of a bottle of Jack Daniel's whiskey.²

Like the Jack Daniels' bottle, Bad Spaniels uses font and white lettering over a black background on an item shaped like a whiskey bottle. The toy features a wide-eyed, cartoon spaniel over the words "Bad Spaniels, the Old No. 2, on your Tennessee Carpet." Although VIP's packaging specifically disclaims any affiliation with Jack Daniel's whiskey, JDPI did not find the toy amusing and demanded that VIP stop production. In response, VIP sought a declaratory judgment that its use of "Bad Spaniels" does not infringe or dilute any of JDPI's trademark rights, and that the Jack Daniel's trade dress and bottle design are not entitled to trademark protection because they are functional and not distinctive. VIP also moved to cancel the Jack Daniel's trademark registration for its bottle design. JDPI counterclaimed that the Bad Spaniels toy constitutes trademark infringement and dilution. VIP responded to those allegations by raising fair use and First Amendment defenses.

JDPI won before the district court with a permanent injunction enjoining VIP from manufacturing and selling its Bad Spaniels toy. VIP appealed, and the Ninth Circuit remanded, finding that while the district court had...