Jack Daniels, the Lanham Act and Dog Poop on your Tennessee Carpet
Jack Daniel’s Properties, Inc., Petitioner
vs.
VIP Products LLC, Respondent
USSC Docket No. 22-148
QUESTION PRESENTED: Respondent VIP Products LLC markets and sells dog toys that trade on the brand recognition of famous companies such as petitioner Jack Daniel’s Properties, Inc. The district court found that VIP’s use of Jack Daniel’s trademarks to sell poop-themed dog toys was likely to confuse consumers, infringed Jack Daniel’s marks, and tarnished Jack Daniel’s reputation. The Ninth Circuit, however, held that VIP’s First Amendment interest in using Jack Daniel’s trademarks as its own marks on funny dog toys conferred special protection from infringement claims and rendered VIP’s commercial dog toys “noncommercial” and thus exempt from dilution-by-tarnishment claims. The questions presented are: I. Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims. 2. Whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act
The Supreme Court heard arguments in a trademark dispute between Jack Daniel’s and a dog accessory company that creates parody chew toys mimicking the whiskey distiller’s iconic bottle and label.
The dispute entails the nation’s largest whiskey distillers asking justices to toss out a lower court ruling that permitted the dog toy company, VIP Products, to continue manufacturing the “Bad Spaniels” line of chew toys because it was ruled to qualify as “expressive work” protected by the First Amendment.
Jack Daniel’s describes VIP Products as creators of “poop-themed dog toys” that are likely to cause confusion and damage the whiskey brand. Some examples of the toy company’s work include swapping Jack Daniel’s wording of “Old No. 7” on its bottle with potty humor such as “the Old No. 2, on your Tennessee Carpet.”
In its defense, VIP told the justices it should be shielded from liability over alleged harms caused by its chew toys, arguing the whiskey company can’t claim the toys are misleading or damaging to the distiller’s famous trademark.
“What is the parody here? Maybe I just have no sense of humor,” Justice Elena Kagan said.
“The parody is multifold, the testimony indicates, and it’s not been disputed, that the parody is to make fun of marks that take themselves seriously,” VIP attorney Bennett Cooper said.
“Well, I mean, you say that, but you make fun of a lot of marks: Doggie Walker, Dos Perros, Smella R Paw, Canine Cola, Mountain Drool,” Kagan said. “Are all of these companies taking themselves too seriously?”
Oral arguments brought forth outrageous hypothetical examples as justices confronted the tricky matter, including a suggestion by Justice Sonia Sotomayor, positing a T-shirt depicting the animal logo of a major political party with the slogan: “Time to Sober Up America,” adding it could be a “donkey” or an “elephant.”
Some of the court’s nine members supplied more obvious signals for where they aligned in the dispute, such as Justice Samuel Alito, who told Jack Daniel’s counsel Lisa Blatt that her position is “concerning” for First Amendment protections. “Could any reasonable person think that Jack Daniel’s had approved this use of the mark?” Alito asked. “Yes,” Blatt argued before Alito presented a scenario casting doubt that the CEO of Jack Daniel’s would approve of any product that “purportedly contains some sort of dog excrement or urine.” Blatt later argued that trademarks “predated the First Amendment,” noting they have been around since the 1500s.
There was not a clear majority of justices who made open signals about where the eventual ruling could land in the dispute, though there was some agreement that perhaps a lower court erred in a favorable decision for VIP. The justices did not signal whether a ruling in this dispute could result in broader implications for trademark law.
President Joe Biden’s Justice Department, which has sided with the whiskey distiller in the dispute, suggested the justices should return the case to lower courts for further analysis on whether the nature of the parody products indicated the company did not violate trademark law.
The U.S. Court of Appeals for the 9th Circuit ruled in 2020 that VIP won on the grounds that it was an “expressive work” and that its parody of the Jack Daniel’s trademark was noncommercial because it was used not only to sell the toys but to “convey a humorous message.”
A decision in the case, Jack Daniel’s Properties, Inc. v. VIP Products, is expected sometime in June.
