VIP Products, LLC markets a line of cute, humorous squeaky dog toys, consisting of vinyl replicas of liquor, beer, wine, and soda brands labeled with humorous names, usually related to dog poop. So, we have toys labeled “Smella R-Crotches”, Heini Sniff’n, Pissness, and Mountain Drool, associated with likenesses of Stella Artois beer, Heineken’s, Guinness, and Mountain Dew bottles. In 2013, VIP released a bottle in the likeness of Jack Daniels, calling it “Bad Spaniels” “43% POO BY VOL” and “100% SMELLY.”
We wrote in November 2020 that Jack Daniels Properties, Inc, owner of the Jack Daniels brand, didn’t find the humor in the product (they must not own dogs) and sued VIP Products for trademark infringement, tarnishment and dilution. Jack Daniels won the initial round but lost on appeal before the US Court of Appeals for the Ninth Circuit. That court sided for VIP Products on the novel trademark theory that VIP Product’s First Amendment rights – the toys being “expressive works” – would be violated unless Jack Daniels could demonstrate that the VIP Product’s use of the Jack Daniels mark is either (1) “not artistically relevant to the underlying work” or (2) “explicitly misleads consumers as to the source or content of the work.”
Jack Daniels didn’t like this decision and filed a Petition for Writ of Certiorari with the United States Supreme Court. In its Petition, Jack Daniels argued that “under the Ninth Circuit’s standard, virtually any “humorous” use of another’s trademark to sell a product is “noncommercial” and thus excluded from dilution liability.” It contends that it is not the law. The International Trademark Association agreed, filing an amicus brief arguing that the Ninth Circuit opinion is misguided in its application of the First Amendment to a trademark infringement dispute.
At the time, we wrote that the odds of the United States Supreme Court granting Certiorari were slim. Seven organizations filed amicus briefs in support of Jack Daniels, but its Petition was denied on October 19, 2020, leaving the Ninth Circuit’s decision standing.
Then, on August 2, 2022, Jack Daniels tried again and submitted a new Petition for Writ of Certiorari, and this time the Supreme Court granted it. The questions before Court are
1. Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims.
2. Whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act.
In its Petition, Jack Daniels claims that consumer confusion arises from VIP Product’s taking advantage of the goodwill developed by the brand, i.e. by earning a profit:
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. 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.
In this writer’s opinion, it’s not so much that consumers will be confused – I don’t think they will – it’s the unfairness underlying the joke. VIP Products is taking advantage of Jack Daniel’s investment in its brand. If it were making fun of an unknown brand, it would not be nearly be as funny even if it was about dog poo, which, unless you’re five years old, is not inherently funny either. This is not consumer confusion. Is it confusion by tarnishment? Tarnishment is defined as an injury to a brand’s reputation (Jack Daniel’s Petition at 8). Has Jack Daniel’s reputation been injured by a few pet toys? Does VIP Products’ First Amendment rights supersede all? We will keep you informed.
–Adam G. Garson, Esq.