By Lynn Jordan & Brianna Christenson

The Parties – Jack versus Dog (Toys)
Petitioner, Jack Daniel’s, has been selling its “Old No. 7” Tennessee whiskey for over 150 years. Its trademarks are well known and have been licensed for many uses including, perhaps unexpectedly, on dog leashes, dog collars, and dog houses.

Respondent, VIP Products (“VIP”), makes a range of pet toys, including a variety of bottle-shaped rubber chew toys referencing existing alcohol brands, such as Dos Perros (Dos Equis), Smella Arpaw (Stella Artois), and KatHula (Kahlúa).

The Controversy – “Bad Spaniel”
VIP made a dog toy with trade dress Jack Daniel’s argues is similar to its whiskey bottle. The bottle and toy are the same size and shape with many of the same elements on both labels, such as turning “Jack Daniel’s” into “Bad Spaniel’s exchanging Jack Daniel’s “Old No. 7” for “The Old No. 2.” Because of the label’s “poop humor” and similarities between trade dress, Jack Daniel’s sent a cease and desist letter. VIP products responded with a declaratory judgment action. Jack Daniel’s counter-claimed for trademark infringement and dilution by tarnishment.

What Happened in the Courts Below?
The District Court of Arizona ruled in favor of Jack Daniel’s on both claims, finding a likelihood of confusion under its infringement claim, and holding that Jack Daniel’s mark is famous and VIP created a negative association under the dilution by tarnishment claim.

The Ninth Circuit did not disturb the finding below that there was a likelihood of confusion. However, the Ninth Circuit vacated the judgment on the infringement claims and remanded on the grounds that heightened First Amendment protection should be applied under the Rogers test because the dog toy is an “expressive work” with a “humorous message.” The Ninth Circuit reversed the dilution by tarnishment claim holding that the use was noncommercial because the use of the mark did more than propose a commercial transaction by being humorous.

Jack Daniel’s filed a petition for a writ of certiorari to the Supreme Court which was granted and the Court heard oral argument on March 22, 2023.

Questions Before the Court
There are two questions before the Supreme Court:

1. Whether heightened First Amendment protection is appropriate for a dog toy design?

2. Does humorous use of the mark fall under the non-commercial exception to the Trademark Dilution Revision Act?

The Rogers Test
The Rogers test was the issue most heavily discussed during oral argument. Briefly, Rogers comes from a Second Circuit decision and uses a two-prong approach to balance First Amendment rights with trademark rights. The test asks: (1) whether the mark is artistically relevant to the underlying work and (2) whether the use of the mark explicitly misleads consumers as to the source or content of the work. Rogers was a case about use of a mark in the title of a movie, though other circuits have expanded the application of the test – including the Ninth Circuit – applying Rogers to other uses including parody uses like in this case below.

The Supreme Court Arguments
The Supreme Court Justices appeared split on the appropriate balance for trademark and First Amendment rights during the oral argument. Counsel for Jack Daniel’s, Lisa Blatt, argued that Jack Daniel’s could win with Rogers intact but that Rogers is atextual therefore the Supreme Court should overrule the case. Matthew Guarnieri, representing the Federal Government as an amicus to Jack Daniel’s (though Justice Gorsuch noted that the Federal Government is not much of a friend to Jack Daniel’s in this case), agreed that Rogers was incorrectly decided and argued that its use as an antecedent test to the Lanham Act is contrary to the will of Congress. VIP, represented by Bennett Cooper, took two approaches to the issue. First, VIP argued that the Rogers test is appropriate and can be applied in favor of VIP. Second, VIP argued that if the Court decided to do away with Rogers or that Rogers should not be applied in parody contexts that more guidance should be given to lower courts on how to balance First Amendment rights for parodies. VIP laid out three questions for courts to consider:

(1) Can the court reasonably perceive the product’s parodic character?

(2) What is the proximity and competitiveness of the party’s goods?

(3) Does the parody otherwise fail to differentiate itself from the parodied mark?

Overall, the justices’ questions seemed to suggest hesitation to do away with Rogers entirely but also skepticism of applying Rogers in this case.

Why Does it Matter? – Paw-sible Effects
The Rogers test is relied on by creators to easily dispose of claims of trademark infringement soon after they are brought. If Rogers is weakened or overturned as no longer good law, it will no doubt have a chilling effect on speech.

It is expected that the Supreme Court will issue an opinion in June.