Bad Spaniels in the Doghouse – Jack Daniels Prevails in Trademark Fight

The U.S. Supreme Court provided clarification on the application of the Rogers test in relation to Jack Daniels v. VIP Products. Scott Hervey and Jamie Lincenberg talk about this ruling on this episode of The Briefing by the IP Law Blog. Watch this episode on the Weintraub YouTube channel here. Show Notes: Scott: In the case of Jack Daniel’s Properties, Inc. v. VIP Products, the Supreme Court has spoken and provided clarification on the application of the Rogers test and whether the parodic use of another’s trademark is always non-commercial use for the purposes of a dilution claim. We are going to talk about this ruling and its potential future applications on this installment of the Briefing by WT. I am Scott Hervey of Weintraub Tobin, and I am joined today by my colleague, Jamie Lincenberg. Jamie, welcome to the briefing. Scott: On June 8, 2023, the United States Supreme Court handed down its opinion in JACK DANIEL'S PROPERTIES, INC. v. VIP PRODUCTS. The dispute dates back to 2014 when Jack Daniel's sent a series of cease and desist letters to VIP products concerning its squeaky dog chew toy, Bad Spaniels. This toy parodies the Jack Daniel's product;  “Jack Daniel's" becomes "Bad Spaniels." And the phrase "Old No. 7 Brand Tennessee Sour Mash Whiskey" turns into "The Old No. 2 On Your Tennessee Carpet." Jack Dailes claimed that VIP Products had infringed and diluted its trademarks. In 2018 a district court judge ruled in Jack Daniels's favor. Jamie: In its ruling on a motion for summary judgment, the district court held that the Rogers test, which is used to balance the interests between trademark law and the First Amendment, was inapplicable because the toy is not an expressive work. Later, after a four-day bench trial, the District Court ruled against VIP Products and found it had infringed Jack Daniel’s marks. Scott: On appeal to the Ninth Circuit, VIP argued that the district court erred in finding that the toy wasn't expressive. The Ninth Circuit, therefore, remanded the matter to the district court to apply the Rogers test, which requires the mark holder to show the putative infringer’s use of the mark either (1) is “not artistically relevant to the underlying work” or (2) “explicitly misleads consumers as to the sources or content of the work. Jamie: In reviewing the Ninth Circuit’s holding, the Supreme Court framed its analysis by starting its opinion with a discussion of the purpose and function of a trademark, which is to serve as an identifier of the source of certain goods and services. From there, the Court then looks at the Ninth Circuit's application of the Rogers test and its analysis of Jack Daniels’ dilution claim. Scott: Right. With regard to the application of the Rogers test, the Supreme Court said the issue is not whether the dog toy is an expressive work. The issue is the nature of the use of Jack Daniel's marks. The Supreme Court found that VIP's use of the marks, while humorous, was for the purpose of serving as a source identifier…trademark use, in other words. That didn't seem to be a controversial analysis since, in its complaint, VIP claimed trademark rights in Bad Spaniels, and VIP had, in fact, secured trademark registration of Bad Spaniels. This use, use as a trademark, is outside of the application of the Rogers test and instead should be analyzed under the multi-factor test like Sleekcraft. Jamie: The Supreme Court said that this approach….confining Rogers to instances where a trademark is not used to designate a work...