Poop Jokes, Jack Daniel’s and Trademark

In a unanimous decision, the Supreme Court of the United States (SCOTUS) has sided with whiskey maker Jack Daniel’s in their long-running battle over a dog toy that parodied their iconic bottle.

The case goes all the way back to 2014, when VIP Products LLC (VIP) sought a declaratory action against Jack Daniel’s Properties, Inc (JDPI). At the time, VIP was producing a dog toy named Bad Spaniels, which mimicked a Jack Daniel’s bottle but with dog poop-themed humor.

VIP filed a lawsuit seeking a declaratory action against JDPI, seeking a ruling that their product was a parody and non-infringing. According to their filing, this came after JDPI had sent multiple legal threats and demands over the bottle. 

The district court, however, sided with JDPI. It found that the Jack Daniel’s bottle design qualified for trademark protection and that VIP had infringed on JDPI’s trademarks and trade dress.  

This resulted in VIP appealing the decision to the Ninth Circuit Court of Appeals, which overturned the lower court’s decision. Though the court agreed that JDPI had a valid trademark, it ruled that the use was non-infringing as it was a parody of the Jack Daniel’s brand.

JDPI then appealed that decision to the Supreme Court, which in turn overturned the Appeals Court decision, finding that VIP had infringed on JDPI’s trademarks. 

The decision comes amid what has been a very busy few months for the Supreme Court on intellectual property matters. Even though this is a trademark case and not a copyright one, it points strongly to the direction in thinking of SCOTUS on intellectual property issues. 

As such, it’s worth taking a look at the ruling and why it may be a sign of things to come.

Trademark and The Rogers Test

The major issue in this case is known as the “Rogers test.” The Rogers test came from a Second Circuit Court of Appeals decision that was handed down in 1989 in the case of Rogers v. Grimaldi.

That case saw movie legend Ginger Rogers file a lawsuit against individuals and companies involved in the distribution of the 1986 film Ginger and Fred. The film was about two Italian performers whose routine was based on Rogers previous work with Fred Astaire. 

The court ultimately sided with the filmmakers, ruling that artists can use trademarks in their work, as long as it doesn’t mislead consumers and has artistic relevance to their work.

This ruling has become a powerful litmus test in trademark law and has been used to get trademark claims dismissed in a wide variety of cases, including the 2015 case Mil-Spec Monkey v. Activision. 

To that end, the Supreme Court didn’t actually address the Rogers test directly in this case. Instead, it said that the Ninth Circuit erred in even applying the test at all, saying 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.”

In short, since the mark was used as a trademark itself, the Rogers test doesn’t apply, and it becomes a straightforward examination of the use of the mark to see if it is confusingly similar.

However, to those who read this site regularly or simply follow intellectual property news, this may sound eerily familiar. That’s because another recent Supreme Court ruling follows a similar pattern.

A Similar Decision

Last month, the Supreme Court handed down another major decision, this one in the Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith case. That case, in brief, dealt with unauthorized Warhol paintings based on a photograph by Lynn Goldsmith. There, the Supreme Court upheld a Second Circuit Court of Appeals ruling that the paintings were infringing. 

Though the Goldsmith case is a copyright case and the Jack Daniel’s case is a trademark one, there is still a strange echo between them.

First, both cases dealt with exceptions to an intellectual property right, fair use in the Goldsmith case and the use of trademarks in creative expression in the Jack Daniel’s one. Second, both areas were dominated by a decades-old test that were established by earlier rulings, the transformativeness test in the Goldsmith case and the Rogers test in the Jack Daniel’s case.

Finally, in both cases, SCOTUS opted to limit those exemptions, issuing rulings that either limit when those tests apply, as with the Jack Daniel’s case, or recontextualizing the tests, as with the Goldsmith case.

What this points to is a Supreme Court that is taking a close look at exemptions to intellectual property rights and pulling back against what it sees some of the ways they’ve been broadened by lower courts by bringing more nuance to the application of those standards.

Both the transformative test and the Rogers test have been dominant forces in their respective areas. The Supreme Court, in both cases, doesn’t appear to be eliminating those tests, but wants them to be examined along with other factors that will ultimately limit their scope.

This, in turn, is going to have the effect of more difficult for others to claim these exemptions when faced with allegations of copyright or trademark infringement. 

Bottom Line

To be clear, I am not a lawyer and trademark is not my area of expertise as a layperson. However, it’s difficult to deny that these two rulings, less than a month apart, have a certain rhyming cadence between them.

The Supreme Court is clearly taking a close look at exemptions to intellectual property rights and, in doing so, are placing guardrails on some of the more broadly-used tests regarding those exemptions.

While this has the impact of making such areas of law less certain and more complicated, that is likely the exact goal. These areas of law are designed to have large amounts of gray area and leave room for nuanced decisions. 

The heavy focus on certain tests limits that nuance, and the Supreme Court is pushing back on that. For the Supreme Court, the complexity of these areas of law is a feature, not a bug, and their decisions are aimed at preserving that.

Whether one agrees or disagrees with these rulings, the Supreme Court has made its intentions abundantly clear, and it’s an intention that will likely carry forward with other rulings in all areas of intellectual property.