June 8, 2023
Decided June 8, 2023
Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 22-148
Today, the Supreme Court unanimously reversed a decision that effectively barred trademark infringement and dilution claims against products that imitate a plaintiff’s trademark to identify the defendant’s products.
Background: VIP Products makes a humorous dog toy called “Bad Spaniels,” which is designed to look like a bottle of Jack Daniel’s whiskey. The toy is shaped like a bottle of Jack Daniel’s whiskey and is labeled with “Old No. 2 on your Tennessee Carpet” instead of Jack Daniel’s “Old No. 7 Tennessee Sour Mash Whiskey” and “100% SMELLY” instead of “40% ALC. BY VOL.” Jack Daniel’s owns trademarks in its whiskey bottle and many of the words and graphics on the label.
Jack Daniel’s sued VIP Products under the Lanham Act for trademark infringement, alleging the toy was likely to cause consumer confusion, and trademark dilution, alleging the toy tarnished the marks by associating famous whiskey with dog excrement.
The Ninth Circuit, relying on the test from the Second Circuit’s decision in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), held the First Amendment barred the trademark infringement claim because the toy is an “expressive work” that communicates a humorous message. The Ninth Circuit also held the dilution claim failed because the toy communicated a parodic message about Jack Daniel’s, even though VIP Products used the Bad Spaniels trademark and trade dress (the features cribbed from Jack Daniel’s) to identify the source of its own products.
Issue: Whether an expressive use of another’s trademark is entitled to heightened First Amendment protection in trademark infringement and dilution suits, where the alleged infringer uses the mark to identify the source of its own goods or services.
No. When an alleged infringer uses a trademark to identify the source of its own goods—in other words, uses the “trademark as a trademark”—the First Amendment does not preclude infringement liability. As for trademark dilution, a parodic use of another’s mark is exempt from liability only if not used to designate source.
Using “a trademark as a trademark … falls within the heartland of trademark law, and does not receive special First Amendment protection.”
Justice Kagan, writing for the Court
What It Means:
The Court’s opinion is available here.
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