The dispute between Jack Daniel’s and VIP Products LLC (“VIP”) over a parody dog toy continues and will finally proceed to the Supreme Court. The case centers around a parody dog toy sold by VIP that mimics the label of a Jack Daniel’s whisky bottle. The toy replaces the text “Jack Daniel’s Old No. 7” with “Bad Spaniels The Old No. 2,” and generally mimics the black and white design of the label and the square shape of the bottle:

Previous decisions in the case have held that the design is a clear parody and therefore does not infringe the Jack Daniel’s trademark and/or trade dress rights. Jack Daniel’s strongly disagrees.

The dog toy dispute has been making its way up and down the courts since 2016. In 2018, the District Court of Arizona ruled in favor of Jack Daniel’s, holding that VIP’s Bad Spaniels toy infringed Jack Daniel’s’ trademark and trade dress rights and that the similarity of the products was likely to cause consumer confusion as to the source of the product. On appeal in 2020, the Ninth Circuit reversed the District Court’s ruling and held that the toy was an expressive work and therefore protected under the First Amendment. The Ninth Circuit specifically referenced a similar Fourth Circuit decision that held “that dog toys which ‘loosely resemble[d]’ small Louis Vuitton handbags were ‘successful parodies of LVM handbags’ . . . and therefore did not infringe the LVM trademark.”[1]

The Supreme Court, without comment or reasoning, denied Jack Daniel’s’ petition for certiorari in January 2021. The case was remanded to the district court which granted summary judgment in favor of VIP, a decision that the Ninth Circuit upheld.

Jack Daniel’s filed a second petition for certiorari in August 2022, with the support of a number of high-powered amici, including Levi Strauss & Co., Patagonia Inc., Constellation Brands, Inc., and the International Trademark Association. Jack Daniel’s argues in its petition that the Ninth Circuit’s ruling “transforms humor into a get-out-of-the-Lanham-Act-free card,”[2] specifically noting that the Second, Seventh, and Eighth Circuits have expressly rejected giving blanket First Amendment protection to humorous parody products. Instead, these courts apply the traditional likelihood of confusion test in which humor or parody is simply one factor among many.

The crux of the Jack Daniel’s argument is twofold. First, that the Ninth Circuit’s ruling places a potential infringer’s free-speech rights above those of a trademark holder, and that this protection will give “copycats free license to prey on unsuspecting consumers and mark holders.”[3] Second, that there is a circuit split between courts that apply the traditional likelihood of confusion test to humor or parody products and those that apply the Rogers test.[4]

VIP fought back in its reply brief, arguing that the Bad Spaniels toy is a simple and traditional case of parody and that the alleged circuit split proffered by Jack Daniel’s does not exist. VIP noted that “[n]o other circuit has held that the Rogers test does not apply to products like VIP’s dog toy” and that there are no circuits that have “recognized a conflict [with] the Ninth Circuit’s ruling.”[5]

In the end, it appears that the Supreme Court has had enough of this dog fight and is set to hear the case in early 2023. The main question that the Court will decide is whether humorous use of a mark in commercial products should be subject to the traditional likelihood of confusion analysis, or whether it should receive heightened First Amendment consideration. The decision will undoubtedly have a major impact on the analysis of the defense of parody to trademark infringement claims and is slated to be one of the top intellectual property decisions for the Supreme Court’s next term.  

[1] VIP Products LLC v. Jack Daniel’s Properties, Inc., 953 F.3d 1170, 1175 (9th Cir. 2020).

[2] Jack Daniel’s Properties, Inc., v. VIP Products LLC, Petition for A Writ of Certiorari, Dkt. No. 22-148 (Aug. 5, 2022).

[3] Id.

[4] The Rogers test states that expressive works may use another’s trademark unless (i) the mark has no artistic relevance to the underlying work; or (ii) use of the mark is explicitly misleading. Rogers v. Grimaldi, 875 F.2d 994 (2d. Cir. 1989).

[5] Jack Daniel’s Properties, Inc., v. VIP Products LLC, Brief in Opposition, Dkt. No. 22-148 (Oct. 17, 2022)