The United States Supreme Court has granted certiorari to Jack Daniel’s distillery in its appeal of a Ninth Circuit decision holding that a dog toy manufacturer’s use of the Jack Daniel’s trademarks and label design is expression protected by the First Amendment. The noted whisky manufacturer, undaunted by the Supreme Court’s denial of cert in January 2021, took a rare second shot earlier this year when it filed a second Petition for Certiorari, which has proven to be successful.
The Supreme Court’s change of heart means it will now hear Jack Daniel’s appeal of a controversial Ninth Circuit ruling that a dog toy, even though sold as a for-profit commercial product, enjoyed First Amendment protection as an “expressive work” because it employed humor in parodying the famous Jack Daniel’s label. As we’ve discussed recently, courts have struggled to balance trademark law with the First Amendment. Here, the Ninth Circuit found social value in the dog toy, produced by VIP Products, and dismissed the distillery’s claims of trademark infringement and dilution by tarnishment. The case was VIP Products, LLC v. Jack Daniel’s Properties, Inc., 953 F.3d 1170 (9th Cir. 2020). Jack Daniel’s more recent Petition for Cert identifies two questions for review:
- 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.
- 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.
The Petition’s emphasis on the designation of “a commercial product” invites the Court to reconsider recent trademark infringement and dilution jurisprudence involving products offered for commercial sale under claimed “parody” trademarks. Should courts treat such products as “expressive works” entitled to First Amendment protection? Or should the products’ commercial nature subject them to the likelihood of confusion analysis employed in infringement cases and the “tarnishment” analysis used to determine if a plaintiff’s famous mark has been damaged by being unfairly associated with unsavory and potentially offensive content? VIP characterized its “dog poop” humor as satirical social comment aimed at deflating self-important trademark owners like Jack Daniel’s. The distillery maintains that VIP gratuitously targeted the famous whiskey label with abusive humor that delivered no socially meaningful value, and exploited its famous mark solely to enhance commercial sales.
Arguments are scheduled for January and the Court will likely issue a holding before the end of its current term.