Supreme Court Rules In Favor Of Jack Daniel's In Trademark Case ' Defendant Put In The Dog House Over Parody Dog Toy

• Jurisdiction: United States,Federal
• Law Firm: Reavis Page Jump
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Trademark, Trials & Appeals & Compensation
• Author: Ms Nafsika Karavida and Cleopatra Elrashidy
• Published date: 24 July 2023

The U.S. Supreme Court's bite proved louder than its bark when it comes to trademark infringement, when it clarified in a recent unanimous decision in Jack Daniel's Properties, Inc. v. VIP Products LLC ¹ how source confusion is the bane of trademark law's twin goals of opening the collar on consumers' choice and protecting producers' pedigree brands.

In a high-profile trademark case involving the famous Jack Daniel's whiskey bottle and a canine parody affixed to a similarly shaped chew toy, a unanimous Supreme Court held that when an alleged infringer uses a trademark as a designation of source, i.e., as a trademark for the infringer's own goods, neither the so-called Rogers test nor the Lanham Act's exception for non-commercial dilution liability apply². In so holding, the Court primarily did two things. First, it reaffirmed trademark law's primary mission, to protect consumers from confusion about source and to protect trademark owners' right to their brand. Second, it explained under what circumstances artistic use and parody of a trademark warrant the exception to trademark protection and the invocation of the First Amendment. Below, we unpack Jack Daniel's Properties, Inc. v. VIP Products LLC ³ and explain its importance for trademark owners.

Facts

VIP Products LLC ("VIP Products"), the defendant, produces dog toys. Its toys parody famous brands and bear obvious visual resemblance to the original, high-end, and highly distinguishable trademarks which they mock. To this end, VIP Products marketed and sold a chewable dog toy, very visually similar (in both shape and design) to the iconic Jack Daniel's whiskey bottle, aside from the following parodic aspects: the words "Jack Daniel's" were changed to "Bad Spaniels," and "Old No. 7 Brand Tennessee Sour Mash Whiskey" became "The Old No. 2 On Your Tennessee Carpet."

Jack Daniel's Properties, which owns trademarks in the form of the Jack Daniel's bottle and in many of the words and graphics on its whiskey label, did not find the dog toy all that funny and decided the real joke was going to be on VIP Products. And so, Jack Daniel's Properties demanded that VIP Products stop selling the dog toy, alleging that VIP's Bad Spaniel dog toy misled consumers to believe that Jack Daniel's Properties had created or was otherwise responsible for the toy, and additionally that Bad Spaniels had diluted the various Jack Daniel's marks by associating the very famous whiskey with dog excrement ⁴.

Not so fast, said VIP...