Bad Spaniels is slated to get the Supreme Court treatment, with the nation’s highest court agreeing to take on the case, in which Jack Daniel’s has accused VIP Products of trademark infringement in connection with the design of a dog toy that resembles a bottle of its Old No. 7 Black Label Tennessee Whiskey. SCOTUS’ certiorari grant comes on the heels of the U.S. District Court for the Ninth Circuit holding in March 2020 that the toy is an expressive work entitled to First Amendment protection. The Supreme Court previously refused to take on the case despite Jack Daniel’s argument that lower courts have taken different approaches to trademark infringement claims involving the use of famous marks on commercial products in a “humorous” capacity, and more specifically, the extent to which the Rogers test can be stretched. 

For a bit of background: On the heels of the U.S. District Court for the District of Arizona finding for Jack Daniel’s on its trademark infringement and dilution claims and entering a permanent injunction in its favor, VIP Products appealed. In its decision in 2020, the Ninth Circuit sided with VIP Product, holding that the Bad Spaniels dog toy was an “expressive work” entitled to the protections under the First Amendment (despite the lower court’s claim to the contrary). In short: The dog toy conveys a “humorous message,” and that does not change just because it is a dog toy and a commercial product. While the court did not set “a clear bar,” Frankfurt Kurnit Klein & Selz’s Vish Mohan wrote after the fact, it, nonetheless, suggested a “low” bar for when a work can be considered an artistic expression. According to the Ninth Circuit, “A work need not be the expressive equal of Anna Karenina or Citizen Kane to satisfy this requirement.” 

“In remanding the case back to the district court, the Court reiterated how hard it is to sue for trademark infringement involving goods with artistic expressions by explicitly pointing to Louis Vuitton Malletier v. Haute Diggity Dog,” Mohan noted. “Like the Second Circuit,” which was “persuaded by the Fourth Circuit’s opinion in Haute Diggity Dog” when it sided with canvas tote-maker My Other Bag in the case waged against it by Louis Vuitton, Mohan asserted that “it appears that the Ninth Circuit agrees with Fourth Circuit’s Haute Diggity Dog opinion, as the Court said, ‘[n]o different conclusion is possible here.'”

Jack Daniels bottle and a humorous dog toy
VIP Products’ toy (left) & a Jack Daniel’s bottle (right)

In its bid for Supreme Court review, counsel for Jack Daniel’s argued that while “everyone likes a good joke,” VIP Products’ Bad Spaniels toy amounts to a “profit-motivated ‘joke’ [that] confuses consumers by taking advantage of Jack Daniel’s hard-earned goodwill.” Far from just being a joke, the whiskey-maker has claimed that the Ninth Circuit’s decision provides “near-blanket protection” for infringers.

At the heart of Jack Daniel’s recently-granted petition to the court are two key questions: (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.

Reflecting on the Supreme Court’s decision to take on the case, which should result in an outcome before summer 2023, University of Pennsylvania Law School professor Jennifer Rothman stated on Twitter on Monday, “This is a big grant with significant implications for first amendment and commercial speech doctrine, trademark law and the Rogers test, and perhaps less recognized for public accommodations laws, as well.”

The case is VIP Products LLC v. Jack Daniel’s Properties, Inc., 2:14-cv-02057 (D. Arizona).