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That Dog Won’t Hunt: SCOTUS Rejects First Amendment Arguments in Dog Toy Case

by | Jun 13, 2023 | Blog, Trademark Law

The U.S. Supreme Court ruled unanimously Thursday in Jack Daniel’s Properties Inc. v. VIP Products LLC that a dog toy parodying Jack Daniel’s iconic whiskey bottle was subject to traditional trademark infringement and dilution tests.

VIP Products sells a line of dog toys that poke fun at well-known beverage brands—”Mountain Drool,” “Doggie Walker,” “Pawcifico,” “Jose the Perro,” and “Heine Sniffin,” to name a few. VIP’s “Bad Spaniel Silly Squeaker” is shaped like the Jack Daniel’s bottle, and its label claims “43% poo by volume, 100% smelly” and “The Old. No. 2 on Your Tennessee Carpet.” Jack Daniel’s didn’t see the humor in its 150-plus-year-old brand and nostalgic bottle being used for a poop-themed dog toy.

The Court found that VIP’s parody, funny or not, is commercial use and is not an expressive work automatically entitled to First Amendment protection. The question is simply whether consumers are likely to be confused about the source of the toy.

A district court originally found that VIP had infringed the Jack Daniel’s trademark. The Ninth Circuit reversed, holding that the Bad Spaniels toy was covered by the Lanham Act’s noncommercial use exception and was an “expressive work” protected by the First Amendment under Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). The Rogers test protects “expressive works” from trademark infringement claims, requiring dismissal unless the work has no artistic relevance or explicitly misleads as to the source.

But in SCOTUS’s view, the Ninth Circuit was barking up the wrong tree. Because VIP uses the Jack Daniel’s trademark to sell its own dog toys, the Court held that Jack Daniel’s is entitled to a trial to determine whether the Bad Spaniels toy is likely to confuse consumers about its source and whether it is likely to harm Jack Daniel’s reputation.

Justice Kagan’s opinion, joined by all of her fellow justices, was a narrow one, and it declined Jack Daniel’s request to abandon the Rogers test altogether. “We hold only that [the test] is not appropriate when the accused infringer has used a trademark to designate the source of its own goods–in other words, has used a trademark as a trademark. That kind of use falls within the heartland of trademark law, and does not receive special First Amendment protection.”

Justice Kagan reasoned that companies seek and secure federal trademark registration to ensure that they are identified as a product source and that their branded product is distinguishable from others. Trademarks, she explained, benefit “consumers and producers alike” because they help purchasers choose the products they want. Just because a mark parodies or comments on another’s product does not mean the use is excluded from Lanham Act protection as noncommercial use.

The Court vacated the Ninth Circuit’s decision and remanded the case, reviving Jack Daniel’s trademark claims. But all is not lost for underdog VIP, which can still obtain a paws-itive result at trial if it proves that consumers are not likely to confuse its Bad Spaniels toy with the Tennessee whiskey maker.


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