The Ripple Effect of the Jack Daniel's Ruling

In June 2023, the Supreme Court decided a case regarding a parody of the Jack Daniel trademarks for dog toys, VIP Products LLC v. Jack Daniel's Properties, Inc., 953 F.3d 1170 (9th Cir. 2020), vacated, 599 U.S. 140, 143 S.Ct. 1578, 216 L.Ed.2d 161 (2023). We briefly summarized the court’s decision in another article that was authored by Rita Kline on June 10, 2023. You can find this article HERE. In brief, the Supreme Court held that the First Amendment does not automatically shield parodic commercial uses of another’s mark simply because it is an artistic expression. 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. 

Since this monumental decision numerous courts across the United States have based decisions on the Supreme Court’s Jack Daniel’s decision. The Jack Daniel’s holding opened the door for courts to analyze third party use of a registered trademark under the likelihood of confusion factors, even if the use has other expressive content.  

For example, on January 12, 2024, the Ninth Circuit issued their decision upon reexamination of the case in light of the Jack Daniel’s decision in Punchbowl, Inc. v. AJ Press, LLC. The Ninth Circuit initially ruled that the plaintiff’s trademark infringement claim failed as a matter of law because defendant’s use of the mark was expressive in nature and thus outside the scope of the Lanham Act. Following the Jack Daniel’s decision, the Ninth Circuit withdrew their decision and reexamined the defendant’s use of the mark. Upon reexamination, the Ninth Circuit determined that the defendant was using the subject mark as a source identifier and is not shielded by Rogers merely because the use also has other expressive content. The Ninth Circuit vacated judgment and remanded to the district court to analyze the defendant’s use under the likelihood of confusion factors, taking into account the defendant’s argument regarding its expressive content. 

The Supreme Court’s ruling in the Jack Daniel’s case will continue to cause ripple effects in trademark infringement cases. As new rulings across the nation develop, our team is staying informed and apprised of such developments.   

At Renner Otto, the oldest intellectual property firm in Cleveland, we specialize in assisting our clients as they develop efficient Intellectual Property strategies that are tailored to their business’s needs. This includes our client’s need to police and enforce their intellectual property rights.  

Our attorneys are knowledgeable on a wide range of domestic and international IP issues, and we partner with Firms around the world to better serve our clients. Someone from the Renner Otto team would be happy to discuss this topic or any related Intellectual Property matters. Contact us for a complimentary consultation to see how we can help your business move your innovation forward. 

The attorneys at Renner Otto strive to be authorities in all matters concerning the ever-evolving landscape of Intellectual Property; however, the information provided on our website is not intended to be legal advice, nor does it create an attorney-client relationship.