20 January 2023TrademarksSarah Speight

Rogers wrongly applied in Jack Daniel’s TM case: US govt

US government claims an appeals court erred in an earlier judgment that favoured opposition | Lanham Act "incorrectly" applied in parody dog toy dispute | Case could create a “sea change” for trademark cases.

Whiskey brand Jack Daniel’s should be granted a reprieve after losing a trademark dispute over a squeaky dog toy, according to the US government and amicus curiae supporting the drinks maker.

In a brief filed in the US Supreme Court (SCOTUS) this week, on Wednesday January 19, Jack Daniel’s backers—including Campbell’s Soup, Levi Strauss, and Patagonia—insisted that a lower court of appeals was wrong in its opinion of March 2020 to favour toy maker VIP Products.

The US Solicitor General (SG) Elizabeth Prelogar and amicus curiae countered that the US Court of Appeals for the Ninth Circuit incorrectly applied the Rogers test, which relies on the free speech element of the US First Amendment to allow creative expression in the use of commercial trademarks.

The brief also argued that Jack Daniel’s should not have been required to prove a likelihood of confusion, the governing standard under the Lanham Act, and that a district court wrongly disregarded VIP’s claim of parody.

The outcome of the case could impact other humorous or parodic uses of trademarks, as Devlin Hartline, legal fellow at Hudson Institute’s Forum for Intellectual Property, pointed out.

“If the Supreme Court agrees, it would work a sea change to how many courts address infringement claims where the use of the mark is humorous or parodic, such as with the ‘Bad Spaniels’ dog toy at issue here,” he tweeted yesterday.

He added: “It will be interesting to see what the Justices make of this argument. It certainly goes beyond what many of the amicus briefs supporting Jack Daniel's are arguing.”

Years-long dispute

The drinks brand first sued the year after it launched its ‘Bad Spaniels’ toy in 2013, which parodies Jack Daniel’s Tennessee Whiskey bottle, claiming trademark infringement of the bottle shape, fonts and colour scheme.

The squeaky chew toy replaces ‘Jack Daniel’s’ with ‘Bad Spaniels’ and the image of a spaniel. It replaces ‘Old No. 7 Tennessee Sour Mash Whiskey’ with ‘Old No. 2 on your Tennessee Carpet’.

It also replaces ‘40% ALC. BY VOL. (80 PROOF)’ with ‘43% POO BY VOL.’ and ‘100% SMELLY.’

VIP countersued the whiskey maker, claiming non-infringement and non-dilution, arguing that Jack Daniels was not entitled to trademark protection for its trade dress and bottle design.

Following a federal court ruling in favour of Jack Daniel’s in Arizona, the case ended up in the Ninth Circuit, which overturned that decision and found in favour of VIP.

In the brief heard this week, the SG argued that the Rogers test should have been eliminated altogether when reviewing the case, and briefs from supporters of Jack Daniel’s insisted that justices should at least restrict the test’s application.

“The court of appeals erred in requiring [Jack Daniel’s] to satisfy a special threshold test before invoking the statutory likelihood-of-confusion standard for proving trademark infringement under the Lanham Act,” said the writ of certiorari.

“The lower courts did not correctly apply the Lanham Act’s likelihood-of-confusion standard to [the] petitioner’s infringement claims. The court of appeals did not apply that standard at all, and the district court wrongly disregarded respondent’s claim of parody.”

The brief urged the Supreme Court to vacate the earlier judgment and remand for the court of appeals to review whether the likelihood-of-confusion standard is satisfied.

An error in judgment

It added that the court of appeals “erred in superimposing a special threshold test for trademark infringement in the context of ‘expressive works’.”

According to the SG, the First Amendment does not confer any right to use another person’s trademark, or a confusingly similar mark, as a source identifier for goods sold in commerce.

“It was particularly inappropriate for the Ninth Circuit to superimpose” the non-statutory Rogers test, the brief continued.

The brief contended that the court of appeals was also wrong in determining that VIP’s use of parodies of Jack Daniel’s marks should be exempt from the statutory exclusion from trademark-dilution liability for “noncommercial use of a mark”, arguing that the use is “plainly commercial”.

It added that “the Ninth Circuit’s interpretation also renders superfluous the limits that Congress imposed on the express statutory exclusion for parody”.

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