Jack Daniel’s v. Bad Spaniels: Jack Daniel’s Prevails in Trademark Lawsuit

By John W. McGlynn & Shayne D. Rasay

The case is Jack Daniel’s Properties, Inc. v. VIP Products, LLC, No. 22-148 (US). A copy of the decision is linked.

Jack Daniel’s Properties, Inc. (“Jack Daniel’s”), owner of trademarks in the famous Jack Daniel’s bottle of Tennessee whiskey, received a favorable unanimous ruling delivered by the Supreme Court on Jun 8, 2023, in a trademark lawsuit against dog accessory maker, VIP Products, LLC (VIP), whose sale of the parody dog toy called “Bad Spaniels” allegedly violated and diluted Jack Daniel’s intellectual property rights to the bottle and many of the words and graphics on the label.

As illustrated above, on the toy, the words “Jack Daniel’s” become “Bad Spaniels”; the descriptive phrase “Old No. 7 Brand Tennessee Sour Mash Whiskey” becomes “The Old No. 2 On Your Tennessee Carpet”; and “40% alc. by vol. (80 proof)” becomes “43% poo by vol.” and “100% smelly”.

Jack Daniel’s asserted that VIP had infringed their marks by leading consumers to think that Jack Daniels’ created the dog toy and VIP had diluted their marks by tarnishment (e.g. by associating the whiskey with dog excrement).

On the count of trademark infringement, the appellate court ruled, using the Rogers test, that the chew toy sold by VIP is an “expressive work” protected by the First Amendment. With respect to dilution, the Court of Appeals for the 9th Circuit ruled that the pun-laden dog toy entailed a “noncommercial” use by conveying a humorous message about a product (e.g. a parody), thereby shielding VIP from liability. §1125(c)(3)(C).

The Supreme Court rejected both conclusions, finding that the source-identifying function of the disputed marks ultimately “falls within the heartland of trademark law, and does not receive special First Amendment protection.” Because VIP used the marks derived from Jack Daniel’s as source identification, the proper inquiry is the question of likelihood of consumer confusion, not the threshold Rogers test. Without ruling squarely on the merits of the Rogers test (e.g. in the context of using protected marks in commercial products containing expressive or artistic works), the Court nevertheless held that the Rogers test (and the First Amendment) does not demand an alleged infringer be insulated from “trademark law’s cardinal sin–…when someone uses another’s trademark as a trademark”.

On the more straightforward issue of dilution, the Court held that the appellate court’s broad interpretation of the noncommercial exemption is in conflict with the fair use exclusion, which expressly protects “parodying, criticizing, or commenting upon” uses, unless the infringing use is “as a designation of source for the person’s own goods or services.” §1125(c)(3)(A).

Thus, in choosing the “narrow path” and sidestepping the question of whether the Rogers test should be discarded, the intersection between trademark law and the First Amendment remains a murky area.

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