Trademark case in Supreme Court

Whiskey vs. Dog Toys – A Supreme Court Case about Trademark Infringement

Jack Daniel’s Whiskey Trademark vs A Dog Toys Trademark

Jack Daniels objects to Bad Spaniels Trademark. The Supreme Court Case – Jack Daniel’s Props. v. VIP Prods. LLC, 143 S. Ct. 1578, 216 L. Ed. 2d 161, 599 U.S. 140 (U.S.).

The Facts

On page 1582 of the Jack Daniel’s Props. Supreme Court case, Justice Kagan wrote, “This case is about dog toys and whiskey, two items seldom appearing in the same sentence. Respondent VIP Products makes a squeaky, chewable dog toy designed to look like a bottle of Jack Daniel’s whiskey. Though not entirely. On the toy, for example, the words “Jack Daniel’s” become “Bad Spaniels.” And the descriptive phrase “Old No. 7 Brand Tennessee Sour Mash Whiskey” turns into “The Old No. 2 On Your Tennessee Carpet.” The jokes did not impress petitioner Jack Daniel’s Properties. It owns trademarks in the distinctive Jack Daniel’s bottle and in many of the words and graphics on the label. And it believed Bad Spaniels had both infringed and diluted those trademarks. Bad Spaniels had infringed the marks, the argument ran, by leading consumers to think that Jack Daniel’s had created, or was otherwise responsible for, the dog toy. And Bad Spaniels had diluted the marks, the argument went on, by associating the famed whiskey with, well, dog excrement.”

The Court of Appeals, in the decision we review [953 F.3d 1170 (2020)], saw things differently. Though the federal trademark statute makes infringement turn on the likelihood of consumer confusion, the Court of Appeals never got to that issue. On the court’s view, the First Amendment compels a stringent threshold test when an infringement suit challenges a so-called expressive work—here (so said the court), the Bad Spaniels toy. And that test knocked out Jack Daniel’s claim, whatever the likelihood of confusion. Likewise, Jack’s dilution claim failed—though on that issue the problem was statutory. The trademark law provides that the “noncommercial” use of a mark cannot count as dilution. 15 U.S.C. §1125(c)(3)(C). The Bad Spaniels marks, the court held, fell within that exemption because the toy communicated a message—a kind of parody—about Jack Daniel’s.

Supreme Court Legal Principles from the Jack Daniel’s Props. Decision

  • A trademark is not a trademark unless it identifies a product’s source and distinguishes that source from others. In other words, a mark tells the public who is responsible for a product.
  • A source-identifying mark enables customers to select “the goods and services that they wish to purchase, as well as those they want to avoid.
  • The mark “quickly and easily assures a potential customer that this item—the item with this mark—is made by the same producer as other similarly marked items that he or she liked or disliked in the past. Because that is so, the producer of a quality product may derive significant value from its marks.
  • The Lanham Act creates a federal cause of action for the plaintiff when the defendant’s actions are “likely to cause confusion, or to cause mistake, or to deceive.”
  • The Lanham Act also creates a cause of action for the defendant’s dilution of famous marks, where the plaintiff does not need to prove “likelihood of confusion.”

 The Supreme Court’s Conclusions

  • A parody must “conjure up” “enough of [an] original to make the object of its critical wit recognizable.” The parody must also create contrasts, so that its message of ridicule or pointed humor comes clear. And once that is done, a parody is not often likely to create confusion.
  • The fair-use exclusion has its own exclusion: It does not apply when the use is “as a designation of source for the person’s own goods or services.” In that event, no parody, criticism, or commentary will rescue the alleged dilutor. It will be subject to liability regardless.
  • On infringement, we hold only that Rogers v. Grimalidi, 875 F. 2d 994, 999 (2nd Second 1989) does not apply when the challenged use of a mark is as a mark.
  • On dilution, we hold only that the noncommercial exclusion does not shield parody or other commentary when its use of a mark is similarly source-identifying.

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