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Confusing and Diluting Liquor with a Dog Toy

The Supreme Court opined about a canine chew toy in Jack Daniel’s Properties, Inc. v. VIP Products LLC. The defendant sells dog toys parodying Jack Daniel’s beverage. The toys are similarly shaped (but of different material) and are called “Bad Spaniels,” with a descriptive label of “The Old No. 2 On Your Tennessee Carpet” instead of “Old No. 7 Brand Tennessee Sour Mash Whiskey.” “The print at the bottom substitutes ‘43% poo by vol.’ and ‘100% smelly’ for ‘40% alc. by vol. (80 proof ).’” Jack Daniel’s Properties alleged trademark infringement, and the Court supplied pictures:

The Lanham Act protects trademarks from confusion and dilution. The trademark holder claimed both occurred. The 9th Circuit used the 2nd Circuit’s Rogers test which provides a threshold for further proceedings in cases of “expressive works.” The complainant must show either that the mark’s use “has no artistic relevance to the underlying work” or that the use “explicitly misleads as to the source or the content of the work.” If neither could be proved, the infringement claim must be dismissed according to the Rogers test.

“Without deciding whether Rogers has merit in other contexts,” the Supreme Court found that the Rogers test does not apply to alleged use “as a designation of source for the infringer’s own goods.” This reasoning was justified through prior applications of the Rogers test. Yet, the Court suspiciously professed avoidance of a broader opinion about the Rogers test, “which offers an escape from the likelihood-of-confusion inquiry and a shortcut to dismissal,” and “might take over much of the world” if left unchecked.  The Court noted two exclusions from dilution. Neither “noncommercial use of a mark” nor “fair use” for “parodying” may constitute dilution. However, the fair use “exclusion does not apply if the defendant uses the similar mark as a mark.” The Court determined that the 9th Circuit mistakenly interpreted the parody exclusion too broadly, exempting all parodic uses. Instead, “parody (and criticism and commentary, humorous or otherwise) is exempt from liability only if not used to designate source.”

The fate of Bad Spaniels is ambiguous. The Court disavowed the opportunity of determining it, simultaneously noting its parodic use designates source while maintaining that this parodic use benefits the alleged infringer in the analysis of trademark confusion—”consumers are not so likely to think that the maker of a mocked product is itself doing the mocking.” Justice Kagan wrote the Court’s unanimous opinion. Nevertheless, Justice Sotomayor also wrote a concurrence, joined by Justice Alito, to deemphasize the use of consumer surveys in determining trademark confusion. The final opinion was by Justice Gorsuch joined by Justice Thomas, and Justice Barrett. They joined the majority opinion in full yet expressed doubt about the Rogers test, instructing lower courts to “handle” the test “with care” and be “attuned” to a future Supreme Court decision that will resolve the status of the Rogers test.

If you have questions or concerns about how these news reports may affect you or your business, please contact The Burton Law Firm at: 916-822-8700 or email for a consultation.