Trademark cases have gone to the dogs, sort of. Jack Daniel’s recently made headlines for its Supreme Court case against the maker of a lookalike whiskey bottle squeaky pet toy. The Tennessee whiskey producer claims the toy resembles its brand and product too closely and thus degrades its hard-earned goodwill in violation of trademark law. Toy manufacturer VIP Products claims the toy is simply a parody. On March 22, Jack Daniel’s had its day in court – let’s break down Jack Daniel’s trademark infringement claim and explore the case’s implications for IP law. 
Jack Daniel’s trademark and the Lanham Act
Jack Daniel’s legal team bore the burden of showing how VIP Products infringed upon their client’s trademark. Under the Lanham Act in 1946, Congress established a national trademark registration system with guidelines:
- Protection eligibility – in order for a trademark to be protected, it must be distinctive and in use in commerce, i.e. for sale
- Violation eligibility – in order for a trademark to be violated, the plaintiff must demonstrate that (1) the plaintiff has a valid and legally protectable mark; (2) the plaintiff owns the mark; and (3) the defendant’s use of the mark to identify goods or services causes a likelihood of confusion among consumers
The argument in this case was not about protection eligibility, but rather about violation, specifically the third component – does the Jack Daniel’s bottle serve as a source identifier for which the “Bad Spaniels” dog toy causes confusion?
Jack Daniel’s trademark and Rogers vs. Grimaldi (First Amendment)
Another lens under which the Supreme Court justices needed to review Jack Daniel’s trademark claim was free speech and the First Amendment. For this, they looked to the 1989 case Rogers vs. Grimaldi, in which Appellant Hollywood performer Ginger Rogers sought to block the use of a movie title “Ginger and Fred” about two fictional Italian cabaret performers. Rogers lost her case, as the District Court found that the filmmaker’s use of her first name in the title and screenplay of the film was simply an exercise of artistic expression protected under the First Amendment, rather than a violation of the Lanham Act as commercial speech.
The test espoused in the historic case, commonly known as “the Rogers test,” permits artists to lawfully use another’s trademark when doing so is artistically relevant and would not explicitly mislead consumers about the origins of their work.
VIP Products cited the Rogers precedent when it argued that its product was an example of “indisputably a good-faith (and successful) parody,” which is protected under the First Amendment. The 9th Circuit Court sided with them, prompting Jack Daniel’s appeal to the Supreme Court.
In terms of trademark law and free expression under the First Amendment, the Jack Daniel’s case is the most important constitutional IP case that the Supreme Court has reviewed in years. It has the power to abrogate Rogers, perhaps in favor of a new test more favorable to trademark owners.
Jack Daniel’s trademark and the SCOTUS remarks
While the final decision still has not been made, the justices’ remarks about the Jack Daniel’s trademark case have been shared.
As per SCOTUS blog:
- Justice Elena Kagan noted that the dog toy “is a standard commercial product…This is not a political t-shirt. It’s not a film. It’s not an artistic photograph…dog toys are just utilitarian goods and you’re using somebody else’s mark as a source identifier, and that’s not a First Amendment problem.”
- Justice Ketanji Brown Jackson addressed the Lanham Act, as she remarked, “[T]he confusion we care about is that people in the marketplace are going to be looking at these items and think they are the mark owner’s because of the way they’re labeled.” She went on to note that anything broader than that risks infringing on artists’ First Amendment rights.
- Dog owner and lover Justice Samuel Alito asked whether “any reasonable person [could] think that Jack Daniel’s had approved this use of the mark,” i.e. not making a strong connection between the toy and whiskey.
There was no obvious consensus from the five justices about the case; thus, we await their ruling. It is worth noting that several big brands, as well as President Biden, are showing support for Jack Daniel’s.
Trademark law – what’s next?
We’ll share back on the outcome of this case once the Supreme Court decision is final. As Intellectual Property attorneys, this case is of great interest, as it reflects on long-standing trademark law, as well as First Amendment rights. While the overlap and coexistence of these two can be gray, as in the Jack Daniel’s trademark case, it’s important that both are still protected.
Our team has successfully obtained judgments in favor of our clients on the basis of copyright infringement and the Lanham Act. If your business is facing a trademark issue, be sure to connect with our team today.
