A ruff day for parody dog toys
The Supreme Court wrapped up its triumvirate of intellectual property cases (copyright, patent, and trademark) for its current term when it overturned the Ninth Circuit Court of Appeals’ decision in Jack Daniel’s Properties, Inc. v. VIP Products, LLC, Case No. 22-148, Slip. Opinion (June 8, 2023).
This case involved VIP Product’s marketing of dog toys appearing like bottles of Jack Daniel’s whiskey and marketed as BAD SPANIELS and the OLD NO. 2 ON YOUR TENNESSEE CARPET, both phrases humorously playing off Jack Daniel’s famous branding. Jack Daniel’s took umbrage and sued for trademark infringement and dilution-the weakening of a famous brand by
The lower court, the Ninth Circuit Court of Appeals, determined that the poop-themed squeaky toys were expressive works protected by the First Amendment and, as a result, did not infringe. This application of the First Amendment short-circuited the decision-making process of whether there was a likelihood of consumer confusion-the lynchpin of all trademark infringement claims. The Supreme Court disagreed. Couching a source-identifier, i.e., mark or brand, as an expressive work by making it clever, funny, or a parody, does not serve as a shortcut to avoid a likelihood of confusion analysis.
Why do our clients care? This case instructs that simply being funny or clever when playing off a famous brand does not necessarily protect them from a trademark infringement claim. Another lesson to be learned is that this case hinged on the fact that BAD SPANIELS was, itself, being used as a trademark. So, if our clients parody a brand, but do not use it as their source identifier, there may not be an issue. For other clients, they can rest assured that the Supreme Court determined that just because someone is trying to be clever or funny, there is no blank check to infringe or dilute their brands. Of course, every situation is fact specific and should be examined on its own merits.
This case is not over, though. While VIP Products had a ruff day with this opinion, the Supreme Court sent the matter back to the trial court. Now, the trial court must determine whether consumers are likely to be confused as to the source of BAD SPANIELS products.