Supreme Court Rules Against Parody Claim in First Amendment Case

In a recent decision from the Supreme Court, well-known whiskey company Jack Daniel’s came away with a big win against a “parody” dog toy that mimics Jack Daniel’s signature whiskey bottle.

At issue in Jack Daniel’s Properties v. VIP Products, 143 S.Ct. 1578 (2023), was a dog toy offered by VIP similar in shape and size to a Jack Daniel’s whiskey bottle with the familiar black-and-white label and design. The text of the label on the dog toy read “Bad Spaniels” instead of “Jack Daniel’s” and “Old No. 2 on your Tennessee Carpet” instead of “Old No. 7 Tennessee Sour Mash Whiskey.”

Jack Daniel’s demanded that VIP stop selling the toy shortly after it hit the market. However, VIP quickly sought a judgment in federal court in Arizona, asserting that the toy did not infringe or dilute Jack Daniel’s intellectual property. Jack Daniel’s counterclaimed for trademark and trade dress infringement and dilution.

One of the main issues in the case was whether the “Rogers test” applied to bar Jack Daniel’s claim. VIP argued that the test, which is used to protect First Amendment interests in trademark cases involving “expressive works,” was applicable because its “Bad Spaniels” toy was an expressive work which parodied Jack Daniel’s. The court disagreed, though, and held the test did not apply because “VIP had used the cribbed Jack Daniel’s features as trademarks—that is, to identify the source of its own products.” In such cases, the court held, the “Rogers test” is not applicable and the usual infringement analysis as to whether there is a likelihood of confusion should be addressed.

The decision was reversed by the Ninth Circuit Court of Appeals, which held that the “Rogers test” did apply and the case was sent back down to the Arizona district court for a determination of whether Jack Daniel’s could satisfy the test. The district court found that Jack Daniel’s could not satisfy the test and therefore ruled for VIP on the infringement claim. Jack Daniel’s appealed and the Supreme Court agreed to hear the case in 2022. In June 2023, the Supreme Court decided the case in favor of Jack Daniel’s in a unanimous decision.

Ultimately, the Supreme Court held that VIP’s use of the allegedly infringing marks was in a trademark capacity, and therefore the “Rogers test” does not apply. Although VIP’s dog toy has expressive aspects to its marks which parody or make fun of Jack Daniel’s, those marks were used as a designation of source for VIP’s goods, so the “Rogers test” is inapplicable. The “Rogers test” is a limited test that applies only where a defendant uses a trademark in a “non-source identifying way.”

Although the “Rogers test” did not apply, the Court noted that the parodical nature of the marks at issue is relevant to the likelihood of confusion (infringement) analysis. The Supreme Court made no determination as to whether VIP actually infringed, though, and remanded the case to the lower courts for such determination.

If you have questions about parodies in the trademark context, or other concerns about your intellectual property rights, please contact us today!