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High Court to Review Speech Test in Jack Daniel’s Trademark Case

Nov. 21, 2022, 7:17 PM

The country’s largest whiskey maker will finally get its day before the US Supreme Court in a dog-toy trademark case that could shape the contours of brand enforcement, artistic expression, and the First Amendment.

The high court on Monday agreed to hear a dispute between Jack Daniel’s Properties Inc. and a dog toy company, VIP Products LLC, that sold chew toys bearing the distinctive shape of a Jack Daniel’s whiskey bottle and the label “Bad Spaniel’s.”

A previous failed Jack Daniel’s trademark infringement case against VIP Products was rejected by the Supreme Court in January 2021, but an Arizona federal district court encouraged the company to seek a new petition.

The case hinges on what’s known as the Rogers test, a decades-old analysis that balances trademark and free speech rights. Under the test, established in the 1989 Second Circuit decision in Rogers v. Grimaldi, a trademark can be used without authorization as long as it meets a minimal level of artistic expression and doesn’t explicitly mislead consumers.

The US Court of Appeals for the Ninth Circuit in March 2020 ruled that the “Bad Spaniel’s” dog toy passed the Rogers test, finding that the toy’s use of Jack Daniel’s trademarks was a humorous parody. The toy includes dog-related alterations to the actual whiskey bottle’s label, including replacing alcohol content with “43% Poo by Vol.” and replacing the text “Old No. 7" with “Old No. 2.”

The Ninth Circuit decision sparked concern among some attorneys and brand owners who believe the panel wrongly applied the Rogers test to include commercial products, despite its traditional focus on expressive works like movies, books, and music. But prominent intellectual property law professors have argued that the dog toy was clearly a joke that Jack Daniel’s doesn’t have the right to stifle.

The Second Circuit is currently considering the scope of the Rogers test in a trademark dispute between Vans Inc. and the Brooklyn art collective MSCHF Product Studio Inc., which sold shoes that it said are a parody of Vans’ sneakers.

Kilpatrick Townsend & Stockton LLP and Williams & Connolly LLP represent Jack Daniel’s. Dickinson Wright PLLC represents VIP.

The case is Jack Daniel’s Properties Inc. v. VIP Products LLC, U.S., No. 22-148, cert petition granted 11/21/22.

To contact the reporter on this story: Isaiah Poritz in Washington at iporitz@bloombergindustry.com

To contact the editors responsible for this story: Tonia Moore at tmoore@bloombergindustry.com; Jay-Anne B. Casuga at jcasuga@bloomberglaw.com