The US Supreme Court will consider the argument of Jack Daniel’s Properties, Inc. v. VIP Products LLC in the case of the First Amendment right to humorous expression in a commercial matter.
VIP Products LLC – manufactures toys for dogs, including a plastic chew toy that looks like an iconic bottle of Jack Daniel’s whiskey. However, instead of “Jack Daniel’s”, the toy’s label reads “Bad Spaniel’s”, and instead of the descriptors “Old No. 7” and “Tennessee Sour Mash Whiskey”, it says “Old No. 2 on your Tennessee carpet”.
Jack Daniel’s sued a toy company for trademark infringement. VIP Products LLC argued that the shape of the bottle and the general appearance of Jack Daniel’s should not have trademark protection in the first place, and that these trademarks should be canceled. In particular, VIP Products LLC argued that the shape of the bottle and the label were not sufficiently distinctive to be protected independently of the word mark “Jack Daniel’s”.
Under the Lanham Act in the United States, it is an infringement to use another’s trademark in a manner likely to cause confusion as to the origin, sponsorship, or endorsement of the goods. The likelihood of confusion depends on factors such as the strength of the trademark, the relatedness of the goods, the similarity of the parties’ marks, the defendant’s intent, and evidence of actual confusion.
Lanham’s Law
The Lanham Act is a piece of legislation that regulates the use of trademarks in the United States. Its official title is the Trademark and Trademark Protection Act, and it provides trademark owners with protection rights, prohibits counterfeiting and imitation of trademarked products, and provides for penalties for violations of these rules.
In addition, the trademark owner can prevent the use of the mark by another person that may cause “dilution” or “dilution by attenuation”, regardless of whether the use is actually confusing to any consumers.
In addition to VIP Products LLC’s arguments in favor of canceling the Jack Daniel’s trademarks, it mentioned the fair use defense, claiming that the toys were a parody of Jack Daniel’s products.
The court of first instance found that the shape of the bottle and the corporate identity of Jack Daniel’s were distinctive and entitled to trademark protection. The court of first instance ruled that although the dog toy was humorous, it nevertheless diluted and tarnished Jack Daniel’s trademarks with references such as “43% feces by volume”. The trial court issued an injunction prohibiting VIP Products LLC from continuing to sell the toy.
VIP Products LLC appealed to the US 9th Circuit Court of Appeals. The 9th Circuit agreed that the trade dress and design of VIP Products LLC’s Jack Daniel’s bottles were distinctive and aesthetically non-functional, and thus eligible for trademark protection. The panel of judges also noted that although the Bad Spaniel’s toy resembled the trade dress of the Jack Daniel’s bottle, there were significant differences between them, such as the image of the Bad Spaniel and different wording.
To overcome VIP Products LLC’s right to humorous statements, Jack Daniel’s had to prove that VIP Products LLC’s use of its trademarks was infringing:
– clearly misleads consumers about the source or content of the work;
– has no artistic relation to the main work;
Moreover, the US Court of First Instance did not apply the Rogers test as part of its analysis.
Accordingly, the 9th Circuit reversed the District Court’s decision, explaining that although VIP Products LLC used the trade dress and design of Jack Daniel’s bottles to sell Bad Spaniel’s toys, it also used them to convey a humorous message that was protected by the First Amendment to the U.S. Constitution. The Court of Appeals overturned the injunction, allowing VIP Products LLC to sell the popular toys again and to profit from the sales.
Jack Daniel’s has filed an appeal with the US Supreme Court. Jack Daniel’s argues that the 9th Circuit Court should not have applied the Rogers test to protect the First Amendment of the US Constitution, contrary to the Lanham Act. By conflating these legal standards, the 9th Circuit granted enhanced protection to humorous use of the trademark. According to Jack Daniel’s, the proper test for humorous use of a trademark is the likelihood of confusion test, which is used in some other district courts.
In addition, Jack Daniel’s argues that the 9th Circuit Court erred in considering the use of VIP Products LLC’s trademarks non-commercial only because they were humorous. Indeed, under US law, parodies of well-known marks are expressly excluded from dilution claims, but only when the parody is not used as a source identifier for the defendant’s goods. According to Jack Daniel’s, the parody exception does not apply here, as VIP Products LLC used the shape of the bottle and the general appearance of Jack Daniel’s as a source identifier.
Celebrity products
Bennett Cooper, a lawyer for VIP Products LLC, said that their toys, including the Bad Spaniels, were created to humor and criticize products that consider themselves too important.
“In our popular culture, iconic brands are another kind of celebrity,” the lawyer said. “People have a constitutional right to talk about celebrities and, yes, even ridicule them.”
Jack Daniel’s attorney, Lisa Blatt, said that the Lanham Act “has no exception for expressive works.” This law “prohibits the use of marks for any goods where it is likely to cause confusion as to origin, sponsorship or endorsement,” the lawyer said.
The judges plan to deliver a decision by the end of June 2023 in the case of Jack Daniel’s Properties v. VIP Products LLC, so let’s follow the developments together and remember to take care of intellectual property rights today.
copyright / intellectual property / Jack Daniel's / Lanham's Law / trademark / VIP Products
