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Jack Daniel’s Properties, Inc. V. VIP Products LLC


Citation: 599 U.S. ___ (2023)


Docket No.: 22-148


Date of Judgment: June 8, 2023


Court: Supreme Court of the United States


Bench: Chief Justice John G. Roberts Jr., Justice Elena Kagan, Justice Samuel A. Alito Jr., Justice Amy Coney Barrett, Justice Neil Gorsuch, Justice Ketanji Brown Jackson, Justice Sonia Sotomayor, Justice Clarence Thomas, Justice Brett Kavanaugh


Facts: Jack Daniel’s Properties Inc. produces and sells Tennessee whiskey, and has been the registered trademark owner of “Jack Daniel’s” since 1904. VIP Products LLC (“VIP Products”) designs, manufactures, markets, and sells squeaky chew toys for dogs. One of its product lines, ‘Silly Squeakers’, was designed to look similar to popular liquor and beverage brands such as John Walker, 7UP, and Heineken. As part of the same collection, it launched a new product in 2014 with the text ‘Bad Spaniels’, a humorous take on Jack Daniel’s. The toy's features, including its size, square shape, arched lettering, and colour scheme, were similar to that of Jack Daniel’s whiskey bottle. The lines “Old No. 7 Brand Tennessee Sour Mash Whiskey” and “40% ALC. BY VOL. (80 PROOF)” that are usually featured on the whiskey bottle were replaced with “The Old No. 2 On Your Tennessee Carpet” and “43% POO BY VOL.”, “100% SMELLY” on the toy. Unfortunately, Jack Daniel’s did not appreciate the humour and issued a cease and desist letter against VIP, demanding that it stop selling the toy. In response, VIP Products sued Jack Daniel’s in the United States District Court for the District of Arizona, thus spurring a series of events leading up to the Supreme Court of the United States.


Procedural History:

  1. VIP Products sued Jack Daniel’s in its home forum (the District Court for the District of Arizona), seeking a declaratory judgement that ‘Bad Spaniels’ neither infringed nor diluted Jack Daniel’s trademarks. Consequently, Jack Daniel’s filed federal and state-law counterclaims for infringement and dilution by tarnishment. When VIP Products moved for summary judgment, Jack Daniel’s filed a cross-motion for partial summary judgment. The District Court rejected the arguments presented by VIP Products and held that the dog toys infringed Jack Daniel’s trademarks, tarnished their reputation, and would likely confuse consumers.

  2. However, the United States Court of Appeals for the Ninth Circuit (“the Ninth Circuit”) sided with VIP Products by holding that using ‘Bad Spaniels’ was an “expressive work” and should be excused from the ‘likelihood of confusion’ analysis. Through this ruling, the Ninth Circuit partially reversed the District Court’s decision. It also remanded the case to the District Court, which later concluded that VIP Products did not infringe or dilute the trademarks owned by Jack Daniel’s.

  3. Aggrieved by this development, Jack Daniel’s then filed the writ of Certiorari at the Supreme Court, requesting the authority to review the judgment of the Ninth Circuit. The oral arguments took place on March 22, 2023.


Issues:

  1. Whether the humorous use of another's trademark as one's own on a commercial product should be analysed based on the likelihood of confusion that would be caused, or would it be protected under the First Amendment?

  2. Whether the Rogers Test applies to the present dispute resulting in the exemption of VIP Products from trademark dilution liability?

  3. Whether a humorous use of another's mark as one's own on a commercial product will be considered as "non-commercial" under 15 U.S.C. § 1125(c)(3)(C)?


Laws Involved:

  • The Lanham Act (15 U.S.C):

- Sections 1114(1)(a) & 1125(a)(1)(A): unauthorised use of registered trademark which is likely to cause confusion, or to cause mistake, or to deceive

- Section 1125(c): dilution by blurring or tarnishment

  • The First Amendment of the United States Constitution: Provision for freedom of speech and expression.


Analysis:

The Supreme Court granted Certiorari to consider the Ninth Circuit’s rulings on both infringement and dilution claims.


The Rogers Test versus the ‘likelihood of confusion’ test

The Rogers Test became a critical part of the arguments put forth by VIP Products and of the reasoning given by the Ninth Circuit. It originates from the 1989 ruling of the U.S. Court of Appeals for the Second Circuit in Rogers v. Grimaldi. The Test attempts to strike a balance between the freedom of artistic expression embodied in the First Amendment with the risks of the likelihood of confusion as given in the Lanham Act. The decision in Rogers v. Grimaldi provided a two-pronged threshold requirement in cases involving creative works in the context of trademarks:


(1) determining whether a use has “artistic relevance”; and

(2), if so, whether the use is “explicitly misleading”.


VIP Products contended that the infringement and ‘likelihood of confusion' claims are irrelevant since Jack Daniel’s could prove neither of the two factors. Rejecting both arguments, the District Court concluded that VIP Products used ‘Bad Spaniels’ as a source indicator, so the Rogers Test cannot be applied. It also ruled that the “fair use” argument does not hold sway when parodies use a famous mark to identify the source of the alleged diluter’s product. On the other hand, the Ninth Circuit gave more weightage to the Rogers Test than to the ‘likelihood of confusion’ analysis. The Supreme Court held that while the Rogers Test can be relevant in other contexts, it does not hold merit when an alleged infringer uses a trademark as a source identifier for their own products. As VIP Products used ‘Bad Spaniels’ as a designation of source, it will be analysed based on whether there is a likelihood of confusion. The Court also emphasised that using a mark as a parody as humour plays a role in assessing the likelihood of confusion. Additionally, it disagreed with the Ninth Circuit’s finding that the First Amendment demanded a strict threshold requirement when an “expressive work” is said to be infringing in nature. Where the so-called “expressive work” operates as a source identifier, it comes within the purview of trademark law and not the protection granted by the First Amendment.

Thus, without judging the general appropriateness of the Rogers Test, the Supreme Court ruled that it would be inapplicable where a trademark essentially functions as a source indicator.


The ‘non-commercial’ use as an exclusion from dilution liability

VIP Products argued that the use of ‘Bad Spaniels’ is a parody of Jack Daniel’s and, therefore, is a “fair use” of famous marks as given in the Lanham Act, and that as a result, its use would not amount to dilution. The Ninth Circuit concluded that the use of ‘Bad Spaniels’ counts as non-commercial use, as it conveys a humorous message. The Supreme Court found this reasoning problematic due to the broad treatment given by the Ninth Circuit. It noted that under the fair use exclusion, parody escapes liability only when not used as a source designator. Thus, the non-commercial exclusion is irrelevant where parody or other similar commentary is used to inform consumers of the source of the product.



Conclusion:

Through its ruling, the Supreme Court drew a line between the application of the First Amendment and the restrictions included in the Lanham Act. Although the case was remanded back to the lower courts, the Opinions of the Judges are a good starting point to understand the core function of trademarks, viz to act as the indicator of source distinguished from other products and services. It established that regardless of whether the mark contains expressive content to make fun of another mark, it will still be subject to the test of whether consumers get confused about the source of origin. It is, after all, a “cardinal sin”, as pointed out by Justice Kegan, to undermine the function of trademarks as a source identifier.


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