The United States Supreme Court held oral arguments in connection with a dispute between Jack Daniel’s and VIP Products LLC (“VIP”) over a humorous dog toy which is intended to mimic the label of a Jack Daniel’s whisky bottle. Jack Daniel’s Properties, Inc. v. VIP Products LLC, (22-148) (March 22, 2023).
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.
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 after application of the Rogers test, a test fashioned by the Second Circuit in an attempt to balance the rights of brand owners and the First Amendment, rather than a traditional likelihood of confusion analysis under the Lanham Act. See Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). There the Second Circuit held that “section 43(a) of the Lanham Act does not bar a minimally relevant use of a celebrity’s name in the title of an artistic work where the title does not explicitly denote authorship, sponsorship, or endorsement by the celebrity or explicitly mislead as to content.” Id. at 1005.
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. 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,” specifically noting that the Second, Seventh, and Eighth Circuits have expressly rejected giving blanket First Amendment protection to humorous products. Instead, these courts apply the traditional likelihood of confusion test in which humor or parody is simply one factor among many.
Jack Daniel’s argues 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.” Jack Daniel’s also argues 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.
VIP argues 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.
The Supreme Court appears inclined to rule in favor of Jack Daniels. Based upon the questions posed the justices are not likely to overrule the Rogers test, but will render a decision that may avoid its application. For example, several Supreme Court justices did not understand how the Bad Spaniels work was actually a parody. While perhaps amusing, a parody is not simply a humorous work. A parody is a creative work designed to imitate, comment on, and/or mock its subject by means of satiric or ironic imitation. Several justices pressed counsel to explain how the Bad Spaniels toy was a parody and not simply a humorous commercial product. If the latter the Ninth Circuit’s application of Rogers to the dispute was an error and reversal on that grounds alone would preserve the Rogers test and provide Jack Daniel’s the opportunity to move its case forward against VIP.