Authored by Haviland M. M. Kebler, Esq. and Samantha Pendley
The Supreme Court of the United States heard argument in the Jack Daniel’s Properties Inc. v. VIP Products LLC case which was originally brought forth before the United States District Court for Arizona. Jack Daniel’s is one of the most recognizable brands of whiskeys in the world. Founded over one-hundred and forty (140) years ago, this whiskey is primarily produced in Lynchburg, Tennessee. As Jack Daniel’s has established very distinct branding, smartly, they have taken care to protect their branding federally with the United States Patent and Trademark Office (“USPTO”). With over two hundred (200) registered Trademarks, they do not hesitate to protect their Intellectual Property using both administrative courts like the Trademark Trial and Appeal Board and the United States Federal Court System.
VIP Products is an Arizona based company that sells a variety of dog toys. This toy company has a number of lines of dog toys, including the Tuffy®, Mighty®, and Silly Squeakers® lines. As part of the Silly Squeakers® line, VIP produced and sold a dog toy dubbed Bad Spaniels Silly Squeaker that closely resembles Jack Daniel’s signature Old No. 7 Black Label. On the front of the toy packaging, it notes in small font that the toy is not affiliated with the Jack Daniel Distillery.
In 2014, Jack Daniel’s forwarded a Cease and Desist to VIP Products alleging Federal Trademark Infringement. After making its way through the courts, VIP Products appealed to the United States Court of Appeals for the Ninth (9th) Circuit in 2020.The 9th Circuit supported VIP Product’s arguments centered around Jack Daniel’s failing the Rogers test, a threshold test developed by the Second Circuit and designed to protect the First Amendment, which ultimately spurred Jack Daniel’s to file a Petition for Writ of Certiorari to the Supreme Court on August 05, 2022, asking the Supreme Court to weigh in on the important issues of the case. A plurality of Amicus Curiae Briefs were filed by third parties ranging from Campbell Soup Company to President Biden’s Administration.
On November 21, 2022, Jack Daniel’s Petition was granted by the Supreme Court, and the relevant parties filed their requisite Briefs. The questions presented to the Court were: (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, 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” under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act. VIP Product’s main argument centered around the toy being an Expressive Work under the First Amendment protections.
An active Bench questioned the advocates for both sides, giving a number of hypothetical questions for the lawyers to discuss during the argument in order to assist them in ruling on the questions presented. Justices Sotomayor and Alito questioned the advocates about the intersection of the First Amendment Right of Free Speech and intersection with laws that protect brands, but other Justices including Kagan and Gorsuch seemed to be looking for a way to instruct the lower courts in a manner that allows for a certain kind of screening process in these alleged infringment scenarios.
The Supreme Court unanimously ruled in the favor of Jack Daniel’s with Justice Kagan delivering the opinion advising that the Court’s decision is narrow and“hold[s] only that it is not appropriate when the accused infringer has used a trademark to designate the source of its own goods – in other words, has used a trademark as a trademark. That kind of use falls within the heartland of trademark law and does not receive special First Amendment protection”. While the Supreme Court has come to this conclusion for Jack Daniel’s v.VIP Products, the Court, though the concurring opinion by Justices Gorsuch, Thomas, and Barrett caution that the Rogers test be handled with care by the lower courts, have advised that they will not yet decide if the Rogers test is ever appropriate or how far the “noncommercial use” exclusion goes. Though joining the unanimous decision in full, Justices Sotomayor, joined by Justice Alito, concurred, emphasizing that in the context of parodies and First Amendment concerns, that survey results be treated with particular caution.