It’s not often that an intellectual property case involves two of our favorite things: dogs and booze. Jack Daniel’s Properties, Inc. v. VIP Products LLC, a case partially driven by scatological humor – seriously – took center stage today at the United States Supreme Court.
The issues at the heart of this trademark case are whether the humorous use of another’s trademark on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis or receives heightened First Amendment protection from trademark-infringement claims.
Today, our own Erin Klug, a member of the Bar of the Supreme Court of the U.S., attended the uncharacteristically comedic in-person oral arguments at the United States Supreme Court in Washington, DC.
Our trademark attorneys will continue to keep a close eye on developments in this case and its implications for the trademarked works of our clients.
Where This Case Started
The dog toy at the center of this case is the Bad Spaniels Silly Squeaker dog toy, which arguably resembles a bottle of Jack Daniel’s. First, the words “Old No. 7 Brand Tennessee Sour Mash Whiskey” on the bottle-shaped toy are changed to “the Old No. 2, on your Tennessee carpet.” The phrase “40 percent alcohol by volume” is changed to “43 percent poo.”
In 2014, VIP argued in an Arizona federal court that the toy did not violate Jack Daniel’s trademark rights. San Francisco’s Ninth. Circuit Court of Appeals overturned the prior ruling in 2020, holding the parody toy was a creative work entitled to First Amendment protection.
A tag attached to the toy was a likely attempt by the toy maker to avoid the situation they currently find themselves in. It reads, “not affiliated with Jack Daniel Distillery.”
Numerous private and government entities including NIKE, Inc, Motion Picture Association, Inc, Levi Strauss & Co, et al, Campbell Soup Company, American Apparel, the American Intellectual Property Law Association…etc. have filed amicus briefs weighing in on the case with differing opinions. The U.S. Solicitor General’s amicus brief said VIP’s toy noted that the constitution “does not confer any right to use another person’s trademark, or a confusingly similar mark, as a source identifier for goods sold in commerce.” Most brand holders have expressed concern that a ruling against Jack Daniel’s could weaken their own control over their well-known brands. Several organizations argued that a ruling against VIP could stifle First Amendment free-speech rights.
The SCOTUS justices agreed to hear Jack Daniel’s appeal in late 2022.
The Legal Question at the Heart of Jack Daniels Properties, Inc. v. VIP Products LLC
Trademark cases typically hinge on whether the public will likely be confused about a product’s source. The U.S. Solicitor General noted that “[t]he likelihood-of-confusion standard is the governing standard in all actions” because trademark infringement and trademark law “does not prescribe a special test that a plaintiff must satisfy when the plaintiff asserts that a parodic use of its mark in commerce infringes.”
The three-judge panel of the Court of Appeals said the First Amendment requires a more demanding test when the challenged product expresses an idea or viewpoint.
One of the issues explored during oral arguments was whether the Bad Spaniels Silly Squeaker’s branding was expressing an idea or point of view about Jack Daniel’s. Does the messaging on the dog toy rise to the level of an expressive work?
Lawyers for Jack Daniel’s have previously noted that everyone appreciates a good joke while arguing that this one “confuses consumers by taking advantage of Jack Daniel’s hard-earned goodwill.” On the other side of the question, lawyers for VIP Products argued the toy is simply following “in the playful parodic tradition that has ranged over a half-century,” pointing to examples such as Topps’s Wacky Packages trading cards or the musical works of “Weird Al” Yankovic. .
How Does the Rogers Test Apply?
The Rogers Test is a two-pronged analysis applied to expressive works. For the Lanham Act to apply, the plaintiff must be able to show that:
- The defendant’s use of the mark is not artistically relevant to the underlying work; OR
- The defendant’s use of the mark explicitly misleads consumers as to the source or content of the work
By – as lawyers for Jack Daniels put it – relying on a “purported First Amendment interest in making poop-themed jokes at Jack Daniel’s expense” in its ruling, the Ninth Circuit expanded the Rogers test. Before this case, the Rogers test was applied to cases centered on products that are clearly artistic works, such as film and music. However, dog toys have not traditionally been considered canvases for artistic expression.
So, should we continue to use the Rogers Test? During oral arguments Justice Sotomayor reasoned: “I have some hesitation doing away with the Rogers test because without knowing that the likelihood-of-confusion test is sufficiently flexible itself.”
Justice Sotomayor continued with an amusing hypothetical with reference to the political party animals, which later morphed into an example referring to the elephant/Republican party by arguing counsel. Justice Sotomayor referring to a political party’s animal logos, where the political party “…makes a T-shirt where the animal looks drunk, a company by its slogan, Time to Sober Up America, and they wear that proudly at a protest or here in court” and questioned if the consuming public would assume that the activist needed permission to use the logo.
Further, Justice Alito questioned: “Could any reasonable person think that Jack Daniel’s had approved this use of the mark?” Counsel for Jack Daniel’s responded with references to “passing off.”
Counsel for VIP argued: “Parodies on noncompetitive goods like Bad Spaniels aren’t likely to cause confusion as to source or approval” and generally argued for application of the First Amendment. Justice Jackson was cautious about application of the First Amendment and questioned VIP’s reasoning in that “…when you’re dealing with an expressive work, we get a pass under the Lanham Act…” and that “[w]e can put our thing out there. People can be totally confused, but it –but we –we –we didn’t just scream First Amendment and we get out of Lanham Act liability.”
The lengthy and varied questioning from the Justices still makes it unclear which way the Court is siding. Regardless, however, the traditionally stoic and serious court was alive with jokes with the whole audience laughing like it was a standup show. The full transcript from today’s arguments can be read HERE.
The Court’s opinion is expected later this Spring.