The Supreme Court invites consumers to “retrieve a bottle [of Jack Daniels] from wherever you keep liquor” while instructing the lower court to reconsider if VIP Products LLC’s Bad Spaniels Silly Squeaker dog toy creates consumer confusion with the trademarks and trade dress of a Jack Daniel’s whiskey bottle.
The Court held on June 8, 2023, that when a mark like “Bad Spaniels” is used to identify a product’s source, courts should apply a traditional likelihood of confusion analysis and not dismiss trademark infringement claims under what is known as the Rogers test—a balancing test (we wrote about here and here) that protects First Amendment expression like movie titles and song lyrics from trademark infringement lawsuits.
The unanimous opinion starts with an explanation that “a trademark is not a trademark unless it identifies a product’s source (this is a Nike) and distinguishes that source from others (not any other sneaker brand).” The Court reasoned that because VIP Products used “Bad Spaniels” to designate a source of its pet toys, i.e., as a brand name for its product, such use was not entitled to any special First Amendment treatment: “Today, we chose a narrow path. Without deciding whether Rogers has merit in other contexts, we hold that it does not when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer’s own goods.”
The Court also held that Jack Daniel’s can still claim dilution of its famous mark because the parody exclusion does not apply when the alleged diluting mark, in this case the Bad Spaniels mark, designates the source of the goods.
The Supreme Court remanded to the District Court to determine how the parody impacts the likelihood of confusion analysis: “[T]o succeed, the parody must also create contrasts, so that its message of ridicule or pointed humor comes clear. And once that is done (if that is done), a parody is not often likely to create confusion. Self-deprecation is one thing; self-mockery far less ordinary.”
Although the Supreme Court threw Jack Daniels a bone, Jack Daniels may not prevail on remand, if the District Court finds that the parody negates the likelihood of confusion. This is what happened in two similar cases (we wrote about here) involving dog toys mocking famous brands, with “Tommy Holedigger” pet perfume not infringing the Tommy Hilfiger marks and “Chewy Vuiton” dog toys not infringing the Louis Vuitton marks.
The narrow decision also leaves many questions unanswered, such as how Rogers may apply when a mark is used for both an artistic expression—for example, a movie title—and for promotional goods that may use the movie’s title.