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13 March 2023TrademarksMuireann Bolger

Jack Daniel’s lambasts ‘dangerous’ dog toy judgment

Jack Daniel’s accuses a court of eviscerating the core protections of trademark law | Ruling could have “staggering implications for consumers and mark owners” | Jack Daniel’s accused of muzzling free speech by opponent.

Jack Daniel’s has hit back in the run-up to its much-anticipated SCOTUS showdown with a dog toy maker, telling the court that an earlier judgment “guts” its ability to protect its brand and “paves the way for mass confusion in the marketplace”.

The whiskey brand filed a writ of certiorari at SCOTUS on Friday, March 10, ahead of hearings that will look at issues concerning the tension between freedom of speech and trademark rights.

In its filing, Jack Daniel’s argues that the Ninth Circuit—which leads the country in trademark case filings—had “eviscerated the core protections of trademark law”, in flagrant violation of the controlling statutes and in stark conflict with decisions of other circuits”.

The long-running legal dispute emerged in 2014 when VIP Products unveiled a toy, “Bad Spaniels,” that imitates a Jack Daniel’s whiskey bottle, while adding humour.

The US District Court for the District of Arizona later found that the Bad Spaniels toy was likely to confuse consumers and tarnish Jack Daniel’s marks.

The Rogers test

In doing so, it also rejected VIP Products' defence that its dog toy merited heightened First Amendment protection under the Second Circuit’s framework in Rogers v Grimaldi (1989), holding that the test was limited to use of trademarks in titles or expressive or artistic works, such as movies, plays, books, and songs.

But the Ninth Circuit invoked the First Amendment, and applied the Rogers test, to reverse and remand the case.

In a move that the whiskey brand argued later tipped the scales in VIP’s favour, the Ninth Circuit engrafted a two-part test on top of the Lanham Act analysis.

This, it wrote, required Jack Daniel’s to show on remand that VIP’s use of Jack Daniel’s trademarks and trade dress either is “not artistically relevant to the underlying work” or “explicitly misleads consumers as to the source or content of the work”.

According to Jack Daniel’s, the Ninth Circuit’s decision departs from the stance of every other circuit. It then pointed to decisions by the Second, Seventh, and Eighth Circuits that have all rejected claims for heightened First Amendment protection in cases where a party makes humorous use of another’s trademark as one’s own.

The Ninth Circuit, it contended, did not explain why the First Amendment protects speech that the district court found likely to confuse, nor did the court of appeals acknowledge Jack Daniel’s own First Amendment interest in the expressive content of its marks.

‘Staggering’ implications

The consequences of the decision, wrote Jack Daniel’s, are “staggering for both consumers and mark holders”.

Contending that the decision gives copycats free licence to prey on unsuspecting consumers and mark holders, Jack Daniel’s described the decision as dangerously misguided.

The company wrote that, if the decision stands, “companies like VIP may market funny alcohol-themed rip-offs to children”, and “that others may sell funny versions of popular food brands laced with marijuana”.

“And mark holders will be powerless to stop them, because infringers will funnel litigation to the Ninth Circuit, as VIP did here. Only this court can correct the Ninth Circuit’s dangerously misguided decision,” it added.

In its petition, the company also insisted that its trademarks and trade dress define its iconic brand, and that consumers have associated Jack Daniel’s brand with its alcoholic product and the distinctive square shape of its whiskey bottle for more than a century.

In February, VIP Products filed a writ of certiorari, arguing that it “only borrowed enough to make the joke work” and that Jack Daniel’s was trying to “muzzle free speech”.

The whiskey brand went on to insist that while it had a sense of humour, that VIP had gone too far. “To be sure, everyone likes a good joke. But VIP’s profit-motivated ‘joke’ confuses consumers by taking advantage of Jack Daniel’s hard-earned goodwill,” it said.

“The likelihood-of-confusion test already reconciles the competing First Amendment interests of mark holders and infringers; the Ninth Circuit’s test unjustifiably protects even intentionally misleading trademark use and elevates the infringer’s supposed free-speech interest above the mark holder’s,” added the whiskey maker.

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