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If It Looks Like A Bottle: SCOTUS Ruling On A Jack Daniel’s Copy-Dog Is In! – Above the Law


Jack Daniel’s may be crappy whiskey, but they’ve proven that they are willing to go to the Supreme Court to sue over their right to trademark it, bottle and all. Lower courts came to grips over determining if Jack Daniel’s v. VIP Products centered most heavily around parody and the right to free speech or trademark and the right to make a dollar. Today, the Supreme Court has decided which framing of the facts and law is most apropos — and yes, they came down on the side of the bigger monied company. From the opinion:

We hold only that it 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…The use of a mark does not count as noncommercial just because it parodies, or otherwise comments on, another’s products.

The delineation between works that make a profit from their inspiration and ones that don’t is not the first time that the Court has dealt with this issue this term. In the recent Warhol case, Kagan and Sotomayor got into a petty — but interesting — spat about the importance that “transformation” ought play in cases where similar works of art could be used to the same end. If VIP got their way, the Rogers test would be the law that ought frame the dispute between Jack and the Non-Daniel’s bottle. The test is meant to balance the competing interests in respecting free speech on the one hand and trademarks on the other. Its first prong requires that the plaintiff show “that the challenged use of a mark ‘has no artistic relevance to the underlying work.’” I think that there is a parallel line of reasoning between determining what constitutes artistic relevance here and what would amount to a “transformative” take on an artist’s prior work in Warhol. The question of if there is and how VIP would have fared if they were able to get the Court on board with the Rogers test is moot though — they decided to bypass the issue completely and saw this squarely as a trademarking issue:

[W]hatever Rogers’ merit—an issue on which this Court takes no position—it has always been a cabined doctrine: It has not insulated from ordinary trademark scrutiny the use of trademarks as trademarks.

The only question remaining is whether the Bad Spaniels trademarks are likely to cause confusion. Although VIP’s effort to parody Jack Daniel’s does not justify use of the Rogers test, it may make a difference in the standard trademark analysis. This Court remands that issue to the courts below.

In the short term, this is a green light for Jack Daniel’s to celebrate a little! For VIP, on the other hand, some times bull (dog terrier?) shit happens. Long term, much like with the outcome in Warhol, the effects that this Court’s jurisprudence on free use and parody remain unseen.


Earlier: A Free Speech Case Over A Dog Toy? Okay, I’ll Bite.
Ruh-Roh! The Supreme Court Hears Arguments On If Rover’s Crappy Toys Are Really A Free Speech Issue

Chris Williams became a social media manager and assistant editor for Above the Law in June 2021. Prior to joining the staff, he moonlighted as a minor Memelord™ in the Facebook group Law School Memes for Edgy T14s.  He endured Missouri long enough to graduate from Washington University in St. Louis School of Law. He is a former boatbuilder who cannot swim, a published author on critical race theory, philosophy, and humor, and has a love for cycling that occasionally annoys his peers. You can reach him by email at cwilliams@abovethelaw.com and by tweet at @WritesForRent.


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