Written by: Nicholas Holmes

Last week, the Supreme Court in a 9-0 unanimous decision vacated the U.S. Court of Appeals for the Ninth Circuit’s ruling that held VIP Products’ (“VIP”) dog toy mimicking a Jack Daniel’s whiskey bottle was an expressive work entitled to First Amendment protection. Justice Kagan authored the unanimous opinion for the Court.

The case involves a dispute between whiskey manufacturer Jack Daniel’s and VIP, the second-largest American dog toy manufacturer. VIP has a line of spoof products that parody famous brands, such as Dos Perros (Does Equis), Smella Arpaw (Stella Artois), and Doggie Walker (Johnnie Walker).¹ VIP created a new spoof product, this time targeting Jack Daniel’s. The product in question uses the branding “Bad Spaniels” and closely resembles the famous Jack Daniel’s square bottle and markings, as seen below:

The spoof product exchanges “Jack Daniel’s” for “Bad Spaniels” and “Old No. 7 Tennessee Sour Mash Whiskey” for “Old No. 2 on your Tennessee Carpet.”

Jack Daniel’s sued VIP for trademark infringement and dilution under the theory that consumers would likely confuse the “Bad Spaniels” toy with Jack Daniel’s. The trial court agreed and ordered VIP to stop producing and selling the “Bad Spaniels” product.  The U.S. Court of Appeals for the 9th Circuit reversed on both counts. On trademark infringement (under the federal Lanham Act), the court of appeals concluded that VIP’s communication of a humorous message called for heightened scrutiny to ensure that trademark protection for Jack Daniel’s did not intrude on First Amendment values and was entitled to the Rogers test protections because it is an “expressive work.”² On dilution (under the federal Trademark Dilution Revision Act), the court held that VIP was protected by an exception for “noncommercial” uses.³

The Supreme Court, in its decision, clarified that First Amendment considerations under Rogers are not appropriate as a threshold test “when the accused infringer has used a trademark to designate the source of its own goods—in other words, has used a trademark as a trademark.”⁴ In the present case, VIP uses its “Bad Spaniel’s” trademark and trade dress as source identifiers of its dog toy.

Regarding the Ninth Circuit’s dismissal of Jack Daniel’s dilution claim, the Supreme Court held that the “noncommercial use” exclusion cannot include every parody or humorous commentary.⁵ Like the fair use exclusion of the Lanham Act, the exclusions from dilution liability for any noncommercial use of a mark “[do] not apply when the use is ‘as a designation of source for the person’s own goods or services.’”⁶

Justice Kagan summarized the decision, stating “[w]e do not decide whether the Rogers test is ever appropriate, or how far the ‘noncommercial use’ exclusion goes.  On infringement, we hold only that Rogers does not apply when the challenged use of a mark is as a mark. On dilution, we hold only that the noncommercial exclusion does not shield parody or other commentary when its use of a mark is similarly source-identifying.  It is no coincidence that both our holdings turn on whether the use of a mark is serving a source-designation function.  The Lanham Act makes that fact crucial, in its effort to ensure that consumers can tell where goods come from.”⁷

This decision, along with the Supreme Court’s recent decision in Andy Warhol Foundation v. Goldsmith, Lynn, et. al., could signal a trend at the Supreme Court that IP owners will be given a broader scope of protection against those that imitate and copy protected works.

The case is Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. (2023). The opinion is available here.

1. 599 U.S. 1, 6 (2023)

2. 953 F.3d 1170,1175 (2020).

3. See id.

4. 599 U.S. 1, 14 (2023)

5. 599 U.S. 1, 19 (2023)

6. See id.

7. 599 U.S. 1, 20 (2023)