Supreme Court Rules in Favor of Jack Daniel’s in Trademark Case – Defendant Put in the Dog House Over Parody Dog Toy
By Nafsika Karavida and Cleopatra Elrashidy
The U.S. Supreme Court’s bite proved louder than its bark when it comes to trademark infringement, when it clarified in a recent unanimous decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC  how source confusion is the bane of trademark law’s twin goals of opening the collar on consumers’ choice and protecting producers’ pedigree brands.
In a high-profile trademark case involving the famous Jack Daniel’s whiskey bottle and a canine parody affixed to a similarly shaped chew toy, a unanimous Supreme Court held that when an alleged infringer uses a trademark as a designation of source, i.e., as a trademark for the infringer’s own goods, neither the so-called Rogers test nor the Lanham Act’s exception for non-commercial dilution liability apply . In so holding, the Court primarily did two things. First, it reaffirmed trademark law’s primary mission, to protect consumers from confusion about source and to protect trademark owners’ right to their brand. Second, it explained under what circumstances artistic use and parody of a trademark warrant the exception to trademark protection and the invocation of the First Amendment. Below, we unpack Jack Daniel’s Properties, Inc. v. VIP Products LLC  and explain its importance for trademark owners.
VIP Products LLC (“VIP Products”), the defendant, produces dog toys. Its toys parody famous brands and bear obvious visual resemblance to the original, high-end, and highly distinguishable trademarks which they mock. To this end, VIP Products marketed and sold a chewable dog toy, very visually similar (in both shape and design) to the iconic Jack Daniel’s whiskey bottle, aside from the following parodic aspects: the words “Jack Daniel’s” were changed to “Bad Spaniels,” and “Old No. 7 Brand Tennessee Sour Mash Whiskey” became “The Old No. 2 On Your Tennessee Carpet.”
Jack Daniel’s Properties, which owns trademarks in the form of the Jack Daniel’s bottle and in many of the words and graphics on its whiskey label, did not find the dog toy all that funny and decided the real joke was going to be on VIP Products. And so, Jack Daniel’s Properties demanded that VIP Products stop selling the dog toy, alleging that VIP’s Bad Spaniel dog toy misled consumers to believe that Jack Daniel’s Properties had created or was otherwise responsible for the toy, and additionally that Bad Spaniels had diluted the various Jack Daniel’s marks by associating the very famous whiskey with dog excrement .
Not so fast, said VIP Products, and filed suit seeking a declaratory judgment that Bad Spaniels had neither infringed upon nor diluted the Jack Daniel’s trademarks . In response, Jack Daniel’s Properties counterclaimed for infringement and dilution of its trademarks. After a couple of rounds with the legal hounds in the District Court for the District of Arizona, and ultimately the Ninth Circuit Court of Appeals, and after dismissing Jack Daniel’s Properties’ first request for certiorari, the case finally made its way to the Supreme Court.
VIP Products argued that Jack Daniel’s Properties’ infringement claim should be dismissed under the so-called Rogers test—a test developed by the Second Circuit Court of Appeals to protect First Amendment interests in the trademark context . When “expressive works” are involved, as contended by VIP Products in the case of their look-alike dog chew toy, the Rogers test requires dismissal of an infringement claim unless the complainant can show that either (1) the challenged use of a mark “has no artistic relevance to the underlying work”, or (2) it “explicitly misleads as to the source or the content of the work.” VIP Products argued that because Jack Daniel’s could not demonstrate this, the legal analysis of “likelihood of confusion,” which is the primary test under federal trademark law (the Lanham Act), was irrelevant . With regard to the dilution claim, VIP Products argued that Jack Daniel’s Properties’ claim was without merit because Bad Spaniels was a parody of Jack Daniel’s and therefore VIP had made “fair use” of the famous marks .
At the District Court level, Jack Daniel’s came out as top dog. On appeal, however, the Ninth Circuit Court of Appeals affirmed in part, reversed in part, vacated in part, and remanded the case to the District Court, finding that the Rogers test was applicable and that, because Bad Spaniels mocked Jack Daniel’s trademark, it fell under the “noncommercial use” exclusion of the Lanham Act .
On remand, the District Court had to decide whether Jack Daniel’s Properties could satisfy either prong of the Rogers test. This time around, the District Court found that Jack Daniel’s could not satisfy either prong of Rogers (that Bad Spaniels had no artistic relevance to the underlying work, or that it was explicitly misleading as to the source or the content of the work). Jack Daniel’s once again appealed to the Ninth Circuit, which affirmed the District Court’s holding.
The case finally made it to the U.S. Supreme Court which turned the Ninth Circuit’s holding and reasoning on its head. And understandably so.
The Court explained in what context and to which ends exceptions to trademark law are made and why such conditions were not at play in this case. It clarified that the Rogers test was created by the Second Circuit for titles of artistic works and such titles inherently have an “expressive element” worthy of First Amendment protection and, in that context, carry only a “slight risk” of confusion about the source of the underlying work.
The Court further explicated the conditions under which the Rogers test has been applied (and disapplied) and confirmed the limitations of its use only to where the parody of the trademark was used “solely to perform some… expressive function” and never as a trademark – not even in part. The Court concluded:
“Thus, whatever Rogers’ merit—an issue on which this Court takes no position—it has always been a cabined doctrine: It has not insulated from ordinary trademark scrutiny the use of trademarks as trademarks.”
However, the Court stated that even though Rogers was not applicable, the fact that VIP Products was parodying Jack Daniel’s famous whiskey mattered in “assessing confusion because consumers are not so likely to think that the maker of a mocked product is itself doing the mocking.” The Court subsequently turned to the question of dilution and statutory interpretation of the Lanham Act.
Here, the Court explained that the Lanham Act’s exclusion from liability for “any noncommercial use of a mark” , does not shield parody, criticism, or commentary when an alleged diluter uses a mark as a designation of source for its own goods. The Ninth Circuit’s holding, to the contrary, put the noncommercial exclusion in conflict with the statute’s fair-use exclusion. The fair-use exclusion specifically covers uses “parodying, criticizing, or commenting upon” a famous mark , but does not apply when the use is “as a designation of source for the person’s own goods or services.”
Thus, both questions presented to the Court turned on how the Jack Daniel’s mark was used by VIP, and in cases where the mark is used as a source-identifier to sell a product, the Court held that neither the Rogers test nor the Lanham Act’s dilution exception is applicable. The Court leaned heavily on what it labeled the primary objective of trademark law – the protection against source confusion. It stated:
“Confusion as to source is the bête noire of trademark law—the thing that stands directly opposed to the law’s twin goals of facilitating consumers’ choice and protecting producers’ good will.”
The right to parody, including to mock trademarks, is no doubt of paramount importance in a democratic society; so, the exclusion of trademark infringement claims under the Rogers test is sound as such, as is the Lanham Act’s noncommercial dilution exception. The Supreme Court’s firm confinement of the Rogers test to circumstances where a trademark is not used, even in part, as a source identifier is just as sound. The Court stressed that when a trademark is used even in part to identify the source of a goods or service, the consumer has a right of protection from source confusion and the trademark owner has a legitimate right of distinction of its trademark.
The Supreme Court also pointed out that the Ninth Circuit’s extensive view of the application of the dilution exception in the Lanham Act – whenever a trademark has parodic aspects – is far too expansive and risks bringing almost everything under its ambit, thus seriously undermining a trademark owner’s legitimate interest in its trademark. Although the Court stated that its decision was “narrow,” it was nonetheless a clear win for trademark owners because it clarified under what circumstances infringement and dilution claims can be made against an alleged infringer that uses a trademark as a trademark but includes parodic aspects in its pursuit.
 Jack Daniel’s Properties, Inc. v. VIP Products LLC. 22-148, 2023 WL 3872519, at *1 (US June 8, 2023).
 Id., at *3.
 Id., at *1.
 Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). (Suit was brought against producers and distributors of movie “Ginger and Fred” for violation of Lanham Act infringement of common-law rights of publicity and privacy.)
 Jack Daniel’s Properties, 22-148, 2023 WL 3872519, at *1.
 See the Lanham Act § 1125(c)(3)(C).
 See the Lanham Act § 1125(c)(3)(A)(ii).
 Id., at *2 See, e.g., Mattel Inc. v. MCA Records, Inc., 296 F.3d (9th Cir. 2002), 894 (use of the Barbie name in band’s song “Barbie Girl” was “not [as] a source identifier”). The same courts, though, routinely conduct likelihood-of-confusion analysis in cases where trademarks are used as trademarks—i.e., to designate source. See, e.g., Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F.Supp.2d 410 (S.D.N.Y. 2002), 414–415 (parodic pet perfumes did not trigger Rogers because defendant’s use of Tommy Hilfiger’s mark was “at least in part” for “source identification”).
 Id., at *7.
 Lanham Act, § 1125(c)(3)(C).
 Lanham Act, § 1125(c)(3)(A)(ii)
 Lanham Act, § 1125(c)(3)(A).
 Jack Daniel’s Properties, 22-148, 2023 WL 3872519, at *5.