Updated: Jul 6
Mel Brooks once said, “[h]umor is just another defense against the universe.” Jack Daniel’s may disagree.
The U.S. Supreme Court heard argument on March 22, 2023, in a dispute between Jack Daniel’s, the famous Tennessee whiskey purveyor, and VIP Products, a leading manufacturer of dog toys. The dispute involves a dog toy that resembles a Jack Daniel’s bottle of whiskey, including its label, size and shape. While the Jack Daniel’s label features the words “Jack Daniel’s” and “Old No. 7 Tennessee Sour Mash Whiskey,” the dog toy label spoofs the original with “Bad Spaniel Old No. 2 on your Tennessee carpet.” The dog toy also replaces “40% ALC. BY VOL. (80 PROOF)” with the words “43% POO BY VOL.” and and “100% SMELLY.” Initially, a federal district court ruled that VIP Product’s poop-themed dog toy infringed Jack Daniel’s rights because it was likely to confuse consumers and diluted Jack Daniel’s famous mark by tarnishing its reputation. VIP Products appealed and more litigation followed, including an unsuccessful request that the Supreme Court take the case. Eventually, the Court of Appeals for the 9th Circuit held that the VIP product did not infringe because it enjoyed a special First Amendment protection for expressive works, and did not dilute Jack Daniel’s rights because the toy was a “noncommercial,” humorous use. Is the 9th Circuit barking up the wrong tree? Jack Daniel’s argues that the 9th Circuit’s decision is a split from other federal circuits because it failed to apply the usual likelihood of confusion analysis in parody cases involving commercial products. For example, in another dog toy case, the 4th Circuit found a "Chewy Vuiton" dog toy to be a non-infringing parody of the LOUIS VUITTON mark and trade dress. That court reasoned that, while the toy was clearly a play on LOUIS VUITTON’s trademark and trade dress, consumer confusion was unlikely and the use was not likely to impair the distinctiveness of LV's famous mark. A non-infringing parody mimics the original to amuse, not confuse. Rather, it simultaneously evokes the original and conveys that it is not the original. If the parody fails to evoke the original in consumers’ minds, it falls flat. Here, the 9th Circuit arguably strayed from the pack, finding that VIP Product’s humorous treatment warranted heightened scrutiny on First Amendment grounds for “noncommercial” use. This First Amendment exception for artistic works was articulated by the 2nd Circuit in Rogers v. Grimaldi, which found use of Fred Estaire’s and Ginger Rogers’ names in the title of the film “Ginger and Fred” was not infringing because it was a noncommercial, artistic use. In the Jack Daniel’s case, the 9th Circuit relied on that exception, equating VIP Product’s “humorous message” to artistic expression warranting First Amendment protection. The 9th Circuit’s approach is unusual because a Rogers defense is typically unavailable where utilitarian commercial products are involved. Instead of applying the traditional likelihood of confusion analysis, the court applied the heightened Rogers standard – and found it was met. Similarly, after determining VIP Product’s use was non-commercial, it determined that Jack Daniel’s dilution claim was barred as a matter of law. Every Dog Has its Day (in Court) Jack Daniel’s has received support in this dog fight from more than a dozen friend of the court briefs filed by leaders in a diverse array of industries, from fashion and entertainment companies to food and beverage companies. In addition, the U.S. Trademark Office and other legal organizations, such as the American Intellectual Property Law Association and the International Trademark Association, have weighed in to support Jack Daniel’s. Jack Daniel’s and its supporters assert that the 9th Circuit strayed from settled law and would effectively allow junior trademark users to avoid liability under the federal trademark laws, creating a nearly insurmountable hurdle for trademark owners to enforce their marks in parody cases. The stakes are high for famous trademark holders, as a ruling in VIP Product’s favor would dramatically expand First Amendment protection for products that parody trademarks, without considering whether consumers will be confused or the marks will be diluted. Trademark owners, practitioners and parodists alike will be watching and waiting for clarity on these issues. A decision is expected later this year.
Nancy J. Mertzel
Mertzel Law PLLC 1204 Broadway, 4th Floor New York, NY, 10001