The U.S. Supreme Court recently granted Jack Daniel’s petition for review in its case against the makers of “Bad Spaniels,” a dog chew toy that mimics a bottle of Jack Daniel’s whiskey. The dog toy made by VIP Products LLC parodies Jack Daniel’s famous bottle, replacing “Old No. 7” and “Tennessee Whiskey” labeling with “Old No. 2 On Your Tennessee Carpet.”
The dispute dates back to 2014 when Jack Daniel’s sent a series of cease and desist letters to the toy company. In 2018 a district court judge ruled that the toy infringed Jack Daniel’s trademarks. The Ninth Circuit overturned that decision in 2020 on the ground that the toy was an “expressive work” protected by the First Amendment. In January 2021, the Supreme Court declined to hear the case, and the matter returned to the district court. The district court granted summary judgment to VIP Products on remand, which was affirmed by the Ninth Circuit without an opinion.
In August, Jack Daniel’s filed a petition for review, arguing that “the Ninth Circuit’s infringement holding unjustifiably transforms humor into a get-of-out-the-Lanham-Act free card.” “To be sure, everyone likes a good joke,” Jack Daniel’s said. “But VIP’s profit-motivated ‘joke’ confuses consumers by taking advantage of Jack Daniel’s hard-earned goodwill.” On November 21, 2022, the Supreme Court finally granted the petition for review.
This may be the Supreme Court’s chance to weigh in on the “Rogers test,” developed by the Second Circuit in 1989 to evaluate the expressive uses of trademarks. The test allows for the use of a trademark in an expressive work as long as it is artistically relevant and not explicitly misleading.
The case is Jack Daniel’s Properties Inc. v. VIP Products LLC, Case No. 22-148, before the United States Supreme Court.