Last week, the United States Supreme Court granted certiorari in Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 21-16969 (Nov. 21, 2022). The Court will consider the recurring split on the question under the Lanham Act: Under what circumstances does humorous use of another’s trademark as one’s own mark on a commercial product constitute trademark infringement or dilution?
The legal battle started in 2014 when Jack Daniel’s sued in the U.S. District Court for the District of Arizona to enjoin VIP Products from selling dog toys that parodied Jack Daniel’s trademarked Old No. 7 Black Label Tennessee Whiskey bottle. VIP does not sell whiskey or use the JACK DANIEL’S word mark. Rather, VIP’s toy replaces the design of the Jack Daniel’s bottle with humorous dog-themed text alterations, like replacing “Jack Daniel’s” with “Bad Spaniels”; “Old No. 7 Tennessee Sour Mash” with “the Old No. 2 on your Tennessee Carpet” and the alcohol content descriptions with “43% Poo By Vol.” and “100% Smelly.”
The Arizona district court initially found that VIP’s use of Jack Daniel’s trademarks to sell poop-themed dog toys was likely to confuse consumers, infringed Jack Daniel’s marks, and tarnished Jack Daniel’s reputation. A unanimous panel of the Ninth Circuit, however, reversed and remanded, holding that VIP’s toy was a creative work with a “humorous message” that was entitled to First Amendment protections. On remand, the district court found in favor of VIP. The Ninth Circuit then affirmed.
Jack Daniel’s petitioned for certiorari, identifying two issues for review: (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, 15 U.S.C. § 1125(a)(1), 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” and thus bars as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act, 15 U.S.C. § 1125(c)(3)(C). The Supreme Court granted cert on both issues.