On June 8, 2023, the United States Supreme Court issued a unanimous opinion relating to the limits of parody as a defense to trademark infringement. In Jack Daniel's Properties, Inc. v. VIP Products LLC, the Supreme Court found that a parody dog chew toy resembling Jack Daniel's widely recognized black-label whiskey bottle did not qualify as an expressive work protected by the First Amendment. The Court further rejected an argument by the toy's manufacturer, VIP Products, that it was making a permissible non-commercial use of Jack Daniel's trade dress.
What Is a Trademark?
Trademarks are a form of intellectual property used to distinguish one's goods and services from another's. Trademarks can be words, phrases, symbols, or designs. However, the primary function of a trademark is to identify the origin or ownership of the article to which it is affixed. Trademarks can of course do other things: catch a consumer's eye; appeal to the consumer's fancies; and convey every manner of message. But whatever else it may do, a trademark is not a trademark unless it identifies a product's source and distinguishes that source from others. The Lanham Act provides statutory causes of action for both trademark infringement and trademark dilution.
Jack Daniel's Case
VIP Products' line of dog toys are known to parody famous beverage brands, such as Dos Equis and Johnnie Walker. The 'Bad Spaniels' chew toy at the center of this dispute is undisputedly similar in size, shape, and aesthetic features to the famous Jack Daniel's Old No. 7 bottle. The words "Bad Spaniels" replace "Jack Daniel's" and the phrase "The Old No. 2 On Your Tennessee Carpet" replaces "Old No. 7 Tennessee Sour Mash Whiskey," both in similar size and font. No detail was spared as the small print at the bottom of the toy substitutes "43% poo by vol." and "100% smelly" for "40% alc. by vol. (80 proof )."
Jack Daniel's sued VIP Products in the United States District Court for the District of Arizona, alleging trademark infringement and trademark dilution. The District Court ruled in favor of Jack Daniel's, and, on appeal, the United States Court of Appeals for the Ninth Circuit reversed. In the view of the 9th Circuit, Jack Daniel's trademark infringement claim was subject to the threshold Rogers test, governing application of the fair use doctrine, because the Bad Spaniels toy is an expressive work that communicates a "humorous message." The 9th Circuit further held that the chew toy, due to its parody of Jack Daniel's famous whiskey bottle, constituted a non-commercial use, and, therefore, was protected under the fair use doctrine.
In an opinion authored by Justice Kagan, the Supreme Court held it is not appropriate to categorize a work as expressive when the accused infringer has used a trademark as a trademark, a point which VIP Products conceded regarding its dog toy. In the Court's view, such use does not warrant special First Amendment protection. As for Jack Daniel's separate trademark dilution claim, the Court reasoned that use of a trademark does not count as noncommercial just because it parodies, or otherwise comments on, another's products.
The Court rejected the 9th Circuit's opinion on the matter, determining that the Rogers test, in this narrow circumstance, is inapplicable when the defendant is trading on the good will of the trademark owner. In this sense, the interest in free expression is subordinated to the ownership rights of the trademark holder.
As for Jack Daniel's trademark dilution claim, the Court criticized the 9th Circuit's rationale by explaining the nullifying effect an expansive view of the non-commercial use exception would have on Congress' limits on fair use. The fair use exceptions found in the Lanham Act, and case law arising thereunder, according to the Court, should only limit liability if the parody, criticism, or commentary are not used to indicate the source of the goods or services associated with the trademark. As discussed earlier, VIP Products conceded that it used the Bad Spaniels mark as an indicator of source, i.e. as a trademark, and therefore, was a commercial use.
Outlook
The result of the ruling in Jack Daniel's reiterates the primary goal of trademark ownership, namely, using the trademark to clearly identify the sole source of the underlying goods or services. This means that, even if used in parody form, a trademark that is also used as a source identifier does not preclude claims of trademark infringement and dilution. If you want to explore trademark registration, or are concerned about trademark infringement, or just wish to learn more about how trademarks can be protected, contact a lawyer in the Lewis Rice Intellectual Property group for assistance.
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