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Discussing Trademarks Over Whiskey

“When a mark is used as a mark (except, potentially, in rare situations), the likelihood-of-confusion inquiry does enough work to account for the interest in free expression.”  Jack Daniel’s Properties, Inc. v. VIP Products, LLC, 599 U.S. ___ (2023).


As Justice Kagan noted in her opening line to Jack Daniel’s Properties, Inc. v. VIP Products, the “case [was] about dog toys and whiskey, two items seldom appearing in the same sentence.”

The case reached the U.S. Supreme Court as the company VIP Products made a dog toy “designed to look like a bottle of Jack Daniel’s whiskey.”  VIP makes dog toys in parody of other types of products in the marketplace.  There were some differences, but the similarities were apparent.  For example, instead of “Jack Daniel’s”, the toy said, “Bad Spaniels.”  Also, the toy had “The Old No. 2 On Your Tennessee Carpet” instead of “Old No. 7 Brand Tennessee Sour Mash Whiskey.”

But Jack Daniel’s Properties took issue of this.  When the product took the market, Jack Daniel’s sent VIP correspondence asking for VIP to stop selling it.  VIP filed suit seeking a declaratory judgment as to the product being non-infringing nor a dilution of Jack Daniel’s intellectual property.  Jack Daniel’s countersued for federal trademark infringement and trademark dilution by tarnishment. 

In sum Jack Daniel’s said that the toy led to consumer confusion as consumers believed that Jack Daniels was making the toy when, in fact, it was not.  Jack Daniel’s did not want anyone to believe it would be responsible for the toys and said that the toy itself was diluting the brand.  This is even when the VIP product stated in a disclaimer that “This product is not affiliated with Jack Daniel Distillery.”

The dilution was a reference to “dog excrement.”

Noting some of the procedural history, Justice Kagan, in this narrow ruling, noted that the Rogers test surrounding First Amendment expression would not be applicable to this case.

On MSJ at the trial level, VIP argued that there was no infringement claim as there was First Amendment protection for “expressive works.”  It cited the Rogers test, which could be a basis to dismiss a claim for infringement unless two things can be proven: (1) the use “has no artistic relevance to the underlying work” or (2) it “explicitly misleads as to the source or the content of the work.”  Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989).  It also argued for protection as to parody.  15 U.S.C. s. 1125(c)(3)(A)(ii). 

But Justice Kagan said this case is about source identification, protected under 15 U.S.C. s. 1127.  Rogers will not apply except for cases that may be solely about non-trademark uses of a mark.

Does the claim rise or fall based on the likelihood of confusion?

VIP used the Bad Spaniels trademark and dress as a source identification.

The Court held that when an “infringer has used a trademark to designate the source of its own goods—in other words, has used a trademark as a trademark [ ][,] [t]hat kind of use falls within the heartland of trademark law, and does not receive special First Amendment protection … just because it parodies, or otherwise comments on, another’s products.”  (emphasis added).

To unpack this, Justice Kagan provides a brief overview of what trademarks are and what they do (a good tutorial if you are just starting to learn).  The Lanham Act is the federal statute that controls, and defines trademarks as “’[a] word, name, symbol, or device, or any combination thereof’ that a person uses ‘to identify and distinguish his or her goods . . . from those manufacture or sold by others and to indicate the source of the goods.’” See 15 U.S.C. s. 1127.   

In sum, “a mark tells the public who is responsible for a product.” 

This protects the owner of the mark from others reaping financial awards that are associated with the product’s reputation.  It avoids market confusion to the extent an infringer creates a product that harms the public (the mark’s owner doesn’t want to be seen as liable for such harm when it isn’t even a product made by the business), and many other reasons—especially if the product is famous and a profitable commodity.  A company would want to protect any mark that is attributed to its product so nobody else in the market could either erode that reputation or benefit from it.  These marks gain protection when registered with the U.S. Patent and Trademark Office.

Part of this case talked about non-dilution via noncommercial use via 15 U.S.C. s. 1125(c)(3)(C).  Other sections protect what’s called “fair use” when there is parody, criticism, or commenting on a well-known mark, its owner, or its goods.  s. 1125(c)(3)(A)(ii).  But, as J. Kagan notes, there are caveats in these types of cases.  One such is the issue of benefitting:  one cannot benefit when using a “similar-looking mark ‘as a designation of source for the [party’s] own goods.’”  You cannot use a “mark as a mark.”

While this opinion was narrow, it demonstrates that even when used in parody, a company should not take a protected mark and spin it off into a parody and then sell it in the marketplace.  Such action under this case could be considered trademark infringement.



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