22 March 2023TrademarksMuireann Bolger

Jack Daniel’s showdown arrives at SCOTUS

Duo of major cases appear before top US court | Justices tackle parody, freedom of speech, artistically relevant defences and extra-territorial trademark disputes | Herrick, Feinstein | Hanson Bridgett.

The spotlight is firmly on the US Supreme Court this week as it hears oral arguments in two seminal cases that could have marked repercussions for trademark owners.

It will, finally, after months of speculation and debate, hear arguments in Jack Daniel’s high-profile dispute with a dog toy maker.

Heated debate

The hearings follow divided, and sometimes passionate, opinions throughout legal, academic and business circles. After all, SCOTUS is today tasked with delving into the mounting, and critical, tensions between the freedom of speech and expression protected under the US First Amendment and the trademark rights of brand owners.

And while it may not have grabbed as many headlines, Abitron Austria v Hetronic International heard yesterday, Tuesday March 21, is also set to have a significant impact on trademark disputes that cross international borders.

Ultimately, the Jack Daniel’s case tests the boundaries of the parody and artistically relevant defences under the First Amendment in trademark infringement and dilution disputes.

As Barry Werbin, partner at Herrick, Feinstein told WIPR, the result could be game-changing.

High stakes for brand owners

The case assesses whether VIP Products’ ‘Bad Spaniels Silly Squeaker’ toy, which looks like the famous Jack Daniel’s whiskey bottle but with alternate text reflecting light-hearted dog puns, infringes Jack Daniel’s well-known mark.

“Here, the defendant’s product mimics a plaintiff’s famous registered mark but on goods that are completely unrelated to the plaintiff’s goods, to create a humorous or parodic juxtaposition with the plaintiff’s mark and goods,” explains Werbin.

“Until this case arose, most federal courts had limited such heightened First Amendment protection to artistically relevant expressive works, such as films and books, but the Ninth Circuit applied the test here to a commercial toy product.”

Raffi Zerounian, partner at Hanson Bridgett is more forthright in his views concerning this shift against brand owners’ interests.

“Although many trademark attorneys may disagree on where the line should be drawn between the First Amendment and the Lanham Act, I believe that most agree that the Ninth Circuit’s decision in VIP Products upset the balance in the favour of free speech principles by an appreciable margin,” he argued.

Drawing the line

“An allegation of parody should not immunise a seller of an ordinary commercial product using a third-party trademark as its own mark.”

One key aspect of the case needs to be determined by the court, namely, whether the commercial nature of the toy (and commercial products generally) overrides the humorous nature of the goods so as to preclude a First Amendment defence.

Second, it needs to assess whether such use should be deemed ‘non-commercial’ under the federal dilution statute so as to bar a dilution claim by tarnishment.

The Supreme Court’s decision, added Werbin, will be critical in defining more clearly the types of humorous and parodic uses of others’ trademarks that should qualify for First Amendment protection in infringement and dilution cases.

“The court will likely clarify the types of ‘expressive works’ that would qualify for heightened First Amendment protection in such circumstances,” Werbin predicted.

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