Jack Daniel’s Property, Inc. has successfully petitioned the U.S. Supreme Court to hear its dispute against VIP Products LLC, a dog-toy maker known for its playful products that mimic various beverage brands. Jack Daniel’s argues that the 3×10 inch “Bad Spaniels” vinyl dog toy portraying a parody version of the well-known whiskey label violates its federal trademark rights and tarnishes the Jack Daniel’s brand.
Part of the toy maker’s Silly Squeakers line of toys, the toy’s label mimics the whiskey by writing “The Old No. 2 on Your Tennessee Carpet” with “43 percent poo by Vol.” and “100% smelly.” The front of the toy also notes: “This product is not affiliated with Jack Daniel Distillery.”
Jack Daniel’s first initiated suit against the toy maker in 2016. After years of litigation, the Ninth Circuit Court of Appeals held that VIP’s dog toy parody was a non-infringing expressive work entitled to First Amendment protection because the “toy communicate[d] a ‘humorous message,’ using word play to alter the serious phrase[s] that appear[ed] on a Jack Daniel’s bottle.”
Jack Daniels petitioned the Supreme Court for review, arguing that this decision wrongly expands the Rogers test, which protects certain artistic work from infringement claims. In support of Jack Daniel’s petition, the American Intellectual Property Law Association urged the Court to grant review providing “[a]t its core, trademark law is about protecting consumers.” It further claimed, “there is no ‘humor’-based First Amendment exception for misleading trademarks used on ordinary commercial products. Nor does parody automatically transform an ordinary product into an artistic work entitled to heightened protection under Rogers.”
In response, the toy-maker argued that the toy is simply a “pun-filled parody of [the] iconic bottle” following “[i]n the playful parodic tradition that has ranged over a half century from Topps’s Wacky Packages trading cards through ‘Weird Al’ Yankovic.” The toy-maker asserts that the First Amendment protects it when invoking parody.
The Rogers test stems from Rogers v. Grimaldi, a 1989 Second Circuit case, which held that a trademark can be used without permission as long as it has some artistic relevance and it does not explicitly mislead a consumer. If an expressive work passes this test, then the Court need not analyze the likelihood of consumer confusion, the usual benchmark for trademark infringement.
This will be the first time the Supreme Court has weighed in on the applicability of the Rogers test. As SCOTUS blog noted in its Twitter post: “The case will have implications for the tension between parody and intellectual property.”
Whatever the outcome, this case could have startling effects on commercial products. If the Supreme Court adopts the Ninth Circuit’s reasoning, then the test outlined in Rogers could be extended to almost any trademark infringement with an element of humor leaving many well-known brands powerless to prevail against infringing works. On the other hand, if the Supreme Court rejects the lower court’s decision and narrows the Rogers test this could result in an onslaught of costly litigation for sellers of products “poking fun” at brands forcing these sellers to prove that their parody product isn’t likely to confuse customers.