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In July 2023, the U.S. Supreme Court reached a decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC that received a lot of attention for a number of reasons, bad puns being among them. The case concerned squeaky dog toys that recall several well-known brands of alcoholic beverages.

VIP sold a series of dog toys that parodied not just Jack Daniel’s (“Bad Spaniels”), but also Stella Artois (“Smella Arpa”), Johnny Walker (“Johnny Dog Walker”), Heineken (“Heinie Sniff’n”), and Jose Cuervo (“Jose Perro”). The actual Jack Daniel’s label has a lot of writing on it, so VIP had to come up with some phrases to complete the look, transforming “Old No. 7 Brand Tennessee Sour Mash Whiskey” into — much to the chagrin of Jack Daniel’s — “The Old No. 2 On Your Tennessee Carpet.”

On its way to the Supreme Court, the Ninth Circuit found that, because the dog toys were parodies and were “expressive,” they must be allowed. They used a test derived from a case called Rogers v. Grimaldi, which weighs First Amendment issues in trademark cases. The “Rogers” test provides a threshold to determine whether infringement occurred under the Lanham Act. An infringing mark must:

1. Have no artistic relevance to the underlying work; or

2. Explicitly mislead as to the source or the content of the work.

The Supreme Court declined to comment on whether the Rogers test is applicable in this case but did say that the Ninth Circuit improperly ruled that just because the toys were intended to be a parody, they could not be infringing. If expressive content was the test, the Supreme Court said, then that would swallow up all the other factors of an infringement analysis.

Discussion of the trademark infringement and trademark dilution claims began with a primer on the Lanham Act’s chief concern: source identification. Because VIP was using BAD SPANIELS and the trade dress of Jack Daniel’s as trademark and trade dress — that is, to identify the product source — the Court said the parody defense fell apart. The plaintiff didn’t help itself when, in its complaint, it stated that it had exclusive rights in the trademark and trade dress that allegedly parodied Jack Daniel’s trademarks. That’s a very bad place to begin, as that made it easier to determine that the defendant was engaging in trademark usage. The justices remanded the case back to the district court to determine whether expressive commentary in the pet toys might outweigh the defendant’s infringing trademark usage.

Near the end, the Court once again took pains to say that it was not commenting on whether some uses of a famous mark might be sufficiently expressive to deserve First Amendment protection (as successfully argued by the defendant who used the title “Fred & Ginger” for a film about an elderly couple who danced), but rather that expressiveness is just one factor. To determine whether the allegedly infringing use is protectable commentary requires more than simply being commentary. I think the writing on the wall pretty much says this so-called parodist is going to lose on remand as well — and that it will become more difficult to defend so-called artistic use of trademarks, particularly famous ones.

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