Last week, the U.S. Supreme Court heard oral arguments in Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 22-148, a case pitting trademark rights under the Lanham Act against free speech rights under the First Amendment.
At issue is whether VIP’s “Bad Spaniels” dog toy, which resembles bottles of Jack Daniel’s Old No. 7 Black Label Tennessee Sour Mash Whiskey but with a label stating, “Bad Spaniels - The Old No. 2 on your Tennessee Carpet,” is protected parody or infringes the Jack Daniel’s trademark. The Ninth Circuit concluded the toy was protected speech under the Rogers test, which asks whether a challenged use is an expressive work or otherwise does not explicitly mislead consumers. VIP Products LLC v. Jack Daniel’s Properties, Inc., 953 F.3d 1170 (9th Cir. 2020).
Jack Daniel’s urged the Supreme Court to discard the Rogers test, which it argued was not faithful to the Lanham Act’s likelihood of confusion standard. Under that standard, it argued, the toys are likely to cause confusion among consumers, who may mistakenly believe the toys are produced by or affiliated with the whiskey company. Further, it argued, the toys dilute the brand’s distinctiveness, harming its ability to control its own image in the marketplace.
VIP asked the Court to uphold the Rogers test, arguing the toys parody a brand that takes itself too seriously. Justice Kagan was skeptical, suggesting VIP’s argument would lead to the untenable result of allowing unauthorized users of well-known marks to avoid infringement allegations simply by calling them parody. Justice Alito similarly warned that allowing companies to use famous brands in “parody” products could lead to a “slippery slope” where the brand loses its ability to control its own image.
The justices also expressed skepticism about the Jack Daniel’s argument that the toys would confuse the average consumer and harm the company’s reputation. Justice Sotomayor suggested consumers would likely recognize the toys as parody products, while Justice Gorsuch suggested the mere existence of the toys did not necessarily harm the reputation of the Jack Daniel’s brand.
A decision is expected by summer.