Constitutional Law Reporter
Award
Menu
  • Home
  • US Constitution
  • Supreme Court Cases
  • Justices
    • Chief Supreme Court Justices
    • Current Supreme Court Justices
    • Past US Supreme Court Justices
  • American Biographies
    • General
    • Presidents
    • Vice-Presidents
  • Articles
    • Current Cases
    • Historical Cases
    • Impeachment
  • Videos
  • Links
Hot-Topics

January 30, 2023 | SCOTUS Fails to Identify Leaker of Dobbs Opinion

Supreme Court to Consider Jack Daniels Trademark Case

The U.S. Supreme Court recently added to its growing list of high-profile intellectual property cases, agreeing to consider Jack Daniel’s Properties, Inc. v. VIP Products LLC. The trademark case involves a dog toy, “Bad Spaniels,” that imitates a Jack Daniel’s whiskey bottle and asks the Court to clarify where courts should draw the line between parody and trademark infringement.

Facts of the Case

Respondent VIP Products LLC (VIP) sells the “Bad Spaniels Silly Squeaker” dog toy, which resembles a bottle of Jack Daniel’s Old No. 7 Black Label Tennessee Whiskey, but has light-hearted, dog-related alterations. For example, the name “Jack Daniel’s” is replaced with “Bad Spaniels,” “Old No. 7” with “Old No. 2,” and alcohol content descriptions with “43% POO BY VOL.” and “100% SMELLY.”

After Jack Daniel’s Properties, Inc. (Jack Daniel’s) demanded that VIP cease selling the toy, VIP filed this action, seeking a declaration that the toy did not infringe JDPI’s trademark rights or, in the alternative, that Jack Daniel’s trade dress and bottle design were not entitled to trademark protection. Jack Daniel’s counterclaimed, asserting trademark infringement and dilution.

The district court found that VIP’s use of Jack Daniel’s trademarks to sell poop-themed dog toys was likely to confuse consumers, infringed Jack Daniel’s marks, and tarnished Jack Daniel’s reputation. The Ninth Circuit reversed. It held that VIP’s First Amendment interest in using Jack Daniel’s trademarks as its own marks on funny dog toys conferred special protection from infringement claims.

In reaching its decision, the Ninth Circuit found that Bad Spaniels is an expressive work and applied the test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which requires the plaintiff to show that the defendant’s use of the mark is either (1) “not artistically relevant to the underlying work” or (2) “explicitly misleads consumers as to the source or content of the work.” Because it found VIP’s commercial dog toys are “noncommercial,” the Ninth Circuit also found they were exempt from dilution-by-tarnishment claims.

Issues Before the Supreme Court

Jack Daniel’s asked the Supreme Court to intervene, arguing that the Ninth Circuit’s decision would allow humor to serve as a “get out of jail free” card with regard to trademark infringement. “To be sure, everyone likes a good joke. But VIP’s profit-motivated ‘joke’ confuses consumers by taking advantage of Jack Daniel’s hard-earned goodwill,” the company wrote in its petition for certiorari.

The justices have agreed to consider two issues: (1) Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, 15 U.S.C. § 1125(a)(1), or instead receives heightened First Amendment protection from trademark-infringement claims; and (2) whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” and thus bars as a matter of law a claim of dilution-by-tarnishment under the Trademark Dilution Revision Act, 15 U.S.C. § 1125(c)(3)(C).

A date has not yet been set for oral arguments. However, the Supreme Court is expected to issue a decision before the term ends in June 2023.

Previous Articles

SCOTUS Kicks Off February Session With Four Cases
by DONALD SCARINCI on January 26, 2023

The U.S. Supreme Court returned to the bench this week to begin their February session. The justice...

Read More
Supreme Court Adds Two Sixth Amendment Cases to Docket
by DONALD SCARINCI on January 24, 2023

The U.S. Supreme Court recently agreed to consider two cases involving the Sixth Amendment to the C...

Read More
SCOTUS Leaves Title 42 in Place Temporarily
by DONALD SCARINCI on January 19, 2023

In Arizona et al. v. Alejandro Mayorkas et al., the U.S. Supreme Court agreed to keep the federal g...

Read More
All Posts

The Amendments

  • Amendment1
    • Establishment ClauseFree Exercise Clause
    • Freedom of Speech
    • Freedoms of Press
    • Freedom of Assembly, and Petitition
    Read More
  • Amendment2
    • The Right to Bear Arms
    Read More
  • Amendment4
    • Unreasonable Searches and Seizures
    Read More
  • Amendment5
    • Due Process
    • Eminent Domain
    • Rights of Criminal Defendants
    Read More

Preamble to the Bill of Rights

Congress of the United States begun and held at the City of New-York, on Wednesday the fourth of March, one thousand seven hundred and eighty nine.

THE Conventions of a number of the States, having at the time of their adopting the Constitution, expressed a desire, in order to prevent misconstruction or abuse of its powers, that further declaratory and restrictive clauses should be added: And as extending the ground of public confidence in the Government, will best ensure the beneficent ends of its institution.

Read More

More Recent Posts

  • NJ Supreme Court Rules Campus Police Officer Eligible for Arbitration
  • Lorem ipsum
  • Ketanji Brown Jackson to Join SCOTUS as First Black Female Justice
  • SCOTUS Rules Kentucky AG Can Defend Abortion Law

Constitutional Law Reporter Twitter

A Twitter List by S_H_Law

Constitutional Law Reporter RSS

donald scarinci constitutional law attorney

Editor

Donald Scarinci

Managing Partner

Scarinci Hollenbeck

(201) 806-3364

Awards

con law awards

Follow me

© 2018 Scarinci Hollenbeck, LLC. All rights reserved.

Prior results do not guarantee a similar outcome. Attorney Advertising