Jack Daniel’s v. VIP Products: Looking Ahead
The U.S. Supreme Court is expected to issue a decision shortly in a case pitting the First Amendment against the consumer protection interests of trademark law. The case being decided is Jack Daniel’s Properties, Inc. v. VIP Products LLC, which involves a “Bad Spaniels” dog toy in the shape the iconic Jack Daniel’s whiskey bottle, and in which the distiller claims the dog toy infringes its rights in its marks and trade dress.
If this sounds familiar to you, it may be because a few months ago, after the Supreme Court agreed to hear the case, we explained the facts of the case…along with enough dog puns to earn us a serious round of a-paws. With the anticipated decision only weeks away, we now look at how the case is shaping up.
First Amendment versus Trademark Law?
According to the brief filed by Jack Daniel’s, the issues in the case are 1) whether use of another’s trademark on commercial products should be decided on the traditional likelihood of confusion factors or receives First Amendment (heightened) scrutiny and 2) whether use of another’s trademark on commercial products can claim the Trademark Dilution Revision Act’s exemption for parody. The second issue involves statutory interpretation, such that the discussion around this case has focused on the first issue, and we will follow suit.
Briefs, Oral Argument and Amici
Much of the questioning in the oral argument, held March 22, 2023, related to Rogers v. Grimaldi, an often-cited 1989 Second Circuit decision. In Rogers, Ginger Rogers sued the producers of Ginger and Fred, a fictional film about aging cabaret performers imitating the famous dancing duo Ginger Rogers and Fred Astaire. The Rogers court held that trademark law would apply only if two factors were met: (1) if the allegedly infringing title of a movie “has no artistic relevance to the underlying work whatsoever” and (2) if that movie title “explicitly misleads as to the source or the content of the work.” Since then, courts have widely adopted and expanded the Rogers two-factor test beyond titles of artistic works to other instances in which First Amendment protected expression may be implicated, such as paintings, video games, song lyrics and, in this instance, parody.
Jack Daniel’s argued that the likelihood of confusion factors are sufficient to address the expressive nature of VIP Products’ humorous dog toy without resorting to the separate Rogers test because the Rogers test should be reserved for artistic works, and dog toys are not artistic works but rather commercial products.
VIP Products’ argued that Jack Daniel’s is “self-serious” and claimed VIP’s dog toy is protected expression poking fun at the brand. During oral argument, VIP Product’s counsel advocated for a three-part test to apply to parody cases: “One, can the Court reasonably perceive the product’s parodic character? … Two, what is the proximity and competitiveness of the party’s goods? … And third, does the parody otherwise fail to differentiate itself from the parodied mark?”
Justices questioned whether VIP Products’ dog toy is a commercial product, and what that means in the First Amendment context. Justice Alito noted that the text of the First Amendment “takes precedence over the Lanham Act,” while Justice Kagan seemed skeptical that the dog toy product fell within First Amendment protected expression.
In an amicus brief, the International Trademark Association also addressed the commercial/non-commercial distinction, taking the position that the Ninth Circuit has taken Rogers too far by applying it to products outside of traditional artistically expressive works.
What’s next?
Commercial versus non-commercial is a difficult line to draw. Even the most expressive works often contain commercial elements while trademarks in commercial use often contain expressive elements. And even in more traditional free speech contexts, the Supreme Court has given some First Amendment protections to commercial speech.
We hope the Supreme Court provides clear guidance on Rogers outside of traditional expressive works such as movie titles. At the same time, we note that the Court has in recent years given deference to the expressive nature of trademarks, holding that prohibitions on registration of disparaging and immoral or scandalous marks is unconstitutional.
We will be watching this case to see if the Rogers test is scaled back, eliminated altogether, replaced by another multi-factor consideration, or upheld. Anything is paw-sible.