Bloomberg Law
Feb. 24, 2023, 7:29 PM

Justices Asked to Literally Connect the Dots in Dog Toy IP Case

Kyle Jahner
Kyle Jahner
IP Reporter

Friend-of-the-court briefs backing the maker of a Jack Daniel’s bottle-shaped novelty dog toy include an art collective’s invitation to every justice and Supreme Court clerk to submit brand art.

Art collective MSCHF Product Studios Inc.'s unorthodox brief, submitted alongside more standard ones from academics and interest groups, includes 45 different uncompleted connect-the-dot images featuring a famous trademark—each sent directly to a justice or one of their clerks. The group’s submission endorsing VIP Products LLC’s appellate First Amendment victory over Jack Daniel’s Properties, said the clerk or justice completing the page would be creating “artwork that makes use of cultural iconography.”

“Each of you, by your virtue of your position, may decide the fate of artistic expression’s ability to freely choose its subject matter,” MSCHF wrote. It said the drawings—each of which came with a pre-addressed return mailing label—would be displayed by the art collective as part of a gallery show.

“Will they be rendered illegal prior to that exhibition?” the brief asked.

The briefs, filed yesterday, come five weeks after several briefs backing Jack Daniel’s. The case is set for argument on March 22.

Despite whether asking Chief Justice John Roberts to connect dots to create art called “Arm & Hammer & Sickle” will help or be dismissed as a gimmick, other briefs backing VIP agree that the court siding with Jack Daniel’s would pose a threat to First Amendment protection.

The case figures to lay down critical boundaries for courts considering the balancing of free speech, consumer deception and brand owner rights.

The amicus brief from MSCHF Product Studios, Inc., offered each Supreme Court justice and clerk a chance to create their own individual brand-related artwork.
Source: Court documents

Reversal Could ‘Strike Fear’

VIP convinced the US Court of Appeals for the Ninth Circuit that its “Bad Spaniels” dog toy mimicking a Jack Daniel’s bottle replete with dog and poop puns merited First Amendment protection, reversing a lower court. It cited the Second Circuit’s 1989 test from Rogers v. Grimaldi, which has been widely adopted to evaluate the use of trademarks in “expressive works.”

The test allows for use of a trademark in an expressive work if it’s artistically relevant and not explicitly misleading, bypassing trademark law’s multi-factor likelihood of consumer confusion analysis. Jack Daniel’s and the US government want the Rogers test dismantled or limited to titles, arguing it’s a shield for infringers trading on a brand’s name and that a confusion analysis addresses First Amendment concerns.

“The Rogers test is a key shield against the mark owner’s sword. And trademark owners do not hesitate to respond with legal threats based on those uses of their brand,” a brief from the Electronic Frontier Foundation said. “Eliminating the Rogers test would upend decades of nationwide precedent and make it significantly easier for trademark owners to chill critical and comedic expression.”

The Rogers test allows courts to resolve cases earlier and cheaper, which helps creators who can’t afford substantial trademark litigation, a brief by Authors Alliance and ComicMix said. It called trademarks “a cornerstone of our shared cultural vernacular,” and something authors use “both to simulate reality and to critique it.”

“A ruling in Petitioner’s favor could strike fear into the hearts of risk-averse creators, chilling their speech by discouraging them from using certain trademarks altogether,” the brief said. Without a free speech threshold test, “authors will engage in unnecessary self-censorship rather than risk costly litigation.”

Professing the First Amendment

Some backing Jack Daniel’s merely attacked the Rogers test’s reach beyond “traditional” expressive works to utilitarian “commercial products.” But that distinction doesn’t exist, according to a brief from five First Amendment professors. VIP sold non-commercial speech—the creative dog toy—so strict First Amendment standards apply to attempts to curtail it as it’s impossible to separate the commercial aspect, it said.

Trademark law would be unconstitutional if it applied to noncommercial speech, the professors said. Generally, they added, noncommercial and commercial aspects of noncommercial, for-profit speech are “inextricably intertwined.The Rogers test misstepped, because it asked courts to assess artistic relevance, they argued, suggesting that courts should instead ask whether a work is actually “a disguised advertisement for something else.”

“Artistic relevance is not a concept fit for judicial inquiry where noncommercial and commercial aspects of speech are inextricably intertwined,” the First Amendment professors said. “Prohibiting a parody prohibits both its commercial and noncommercial aspects. If the only way to ‘separate’ them would be for the speaker to give away the speech for free, then there is no separable sales pitch, and the speech is fully protected.”

MSCHF Product Studios, Inc.'s amicus connect-the-dots offering for Justice Ketanji Brown Jackson gave a nod to Jack Daniel’s Properties, which brought the trademark case now before the court over a novelty dog toy.
Source: Court documents

The professors also said “powerful entities rarely have a sense of humor about themselves” and regularly use trademark law to suppress speech. The brief cited a variety of cases that didn’t apply Rogers whereunconfusing criticisms of brands like WalMart, MasterCard, Michelob, and Mutual of Omaha led to infringement finding, injunction, or at least costly discovery.

‘Unambiguously a Joke’

Another group of 30 trademark professors said trademark law has been steadily expanding into expressive works, with claims that would have been inconceivable when federal trademark law was first codified. They criticized the government in particular for mischaracterizing the Lanham Act and Rogers, as well as for “inexplicable lack of awareness of decades of case law.”

The professors said trademark law was meant to only to apply to commercial speech, which the Supreme Court has defined as speech that does “no more than propose a commercial transaction.” Their brief said Jack Daniel’s focuses on the “type of product at issue rather than the nature of the speech.”

“Respondent’s Bad Spaniels dog toy is unambiguously a joke (though one that Jack Daniel’s does not appreciate), and that joke is at the heart of what consumers are buying when they buy a VIP toy,” their brief said. “Trademark law does not give Jack Daniel’s the right to prevent others from making a joke at their expense, even if the vehicle for the joke is a dog toy.”

The case is Jack Daniel’s Properties Inc. v. VIP Products LLC, U.S., No. 22-148, Friend of the court briefs 2/23/23.

To contact the reporter on this story: Kyle Jahner in Washington at

To contact the editor responsible for this story: Adam M. Taylor at