Supreme Court Decides Parody Marks Not Entitled to First Amendment Exemption in Jack Daniels Trademark Dispute
6/10/2023
In JACK DANIEL’S PROPERTIES, INC. v. VIP PRODUCTS LLC, the U.S. Supreme Court sided with Jack Daniels in deciding that ‘VIP Products’ use of a dog toy designed to look like a bottle of Jack Daniel’s whiskey along with humorous spoofs on Jack Daniel’s marks. On the toy, “Jack Daniels” became “Bad Spaniels”, and “Old No. 7 Tennessee Sour Mash Whiskey” became “The Old No. 2 on Your Tennessee Carpet”. Jack Daniels contended that these uses, even though humorous, still confused consumers into thinking that they had licensed or otherwise provided permission to VIP to use their brands – when in fact they did not. VIP asserted that their parodic use of their message is exempt from trademark infringement under First Amendment protections for artistic expressions, developed by the courts in dictum in the so-called “Rogers Test”.
Supreme Court Rules in Favor of Jack Daniel’s Trademark Dispute
After a lengthy battle in the courts, the Supreme Court settled the issue by siding with Jack Daniels. The First Amendment does not automatically shield humorous commercial uses of another’s mark simply because it is a humorous interpretation of that mark. In other words, the Rogers Test does not apply to commercial trademark uses. Whatever artistic impression adding humor gives the parody, it’s still commercial speech subject to the Lanham Act likelihood of confusion test to determine if that commercial use in fact is likely to confuse consumers, though SCOTUS cautioned that expressive use of the mark, i.e., its parody, can and should be considered in that determination. Jack Daniels now has a chance of proving infringement in a district court in its continued likely pursuit of taking Bad Spaniels off the market.
This case particularly impacts brand owners who sell products with marks that parody other famous marks. Those marks are still subject to the likelihood of confusion test and more caution should be taken in creating their marks to ensure they are not confusingly similar. Having said that, it is likely that judges would still be concerned about potentially silencing speech.
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