Bad Spaniels vs. Jack Daniel’s: Is It Parody?

By Karsyn Koon

Facts: 

Jack Daniel’s is a popular alcohol brand that is primarily known for its unique whiskey. Jack Daniel’s Properties owns a number of trademarks in relation to this specific product, such as the shape of the bottle and the graphics on its front. The protection of these trademarks was brought into question when VIP Products created its own product called “Bad Spaniels,” a dog toy meant to mimic the whiskey merchandise. When the former company demanded that VIP Products stop selling the toy, VIP Products filed a suit “seeking a declaratory judgment that Bad Spaniels neither infringed nor diluted Jack Daniel’s trademarks. Jack Daniel’s counterclaimed for infringement and dilution.” (Jack Daniel’s Properties, INC. v. VIP Products LLC, 2023). VIP Products rejected any accusations of infringement and justified their actions using the Rogers Test laid out by case precedent. The Rogers Test was created from Rogers vs. Grimaldi (1989) and determines whether the use of a third-party mark in one's own work violates the Lanham Act. VIP goes on to defend itself against claims of dilution by pointing out its product is a parody of Jack Daniel’s whiskey and therefore ought to be protected under statute 15 U.S.C. §1125(c)(3)(A)(ii). The case went before the U.S. Supreme Court solely in relation to the infringement aspect of the issue and whether or not the Rogers Test is appropriately applicable here.  

Procedural Posture: 

• District court: decided in favor of Jack Daniel’s 
• The Court of Appeals: reversed under the decision that the Rogers test does apply, remanded the case to the District Court  
• District Court: granted summary judgement to VIP on infringement only 
• The Court of Appeals: affirmed 

Issue: 

Whether the Rogers test applies in this case of infringement, in which another entity’s trademarks are used as one’s own trademarks. 

Holding: 

“When an alleged infringer uses a trademark as a designation of source for the infringer’s own goods, the Rogers test does not apply.” (Jack Daniel’s Properties, Inc. v. VIP Products LLC, 2023) 

Rationale: 

SCOTUS contends that the purpose of the Rogers test was "for titles of “artistic works” based on its view that such titles have an “expressive element” implicating “First Amendment values” and carry only a “slight risk” of confusing consumers about the “source or content” of the underlying work.” 875 F. 2d, at 998–1000. The test has been further defined by lower courts as a case “in which a trademark is used not to designate a work’s source, but solely to perform some other expressive function” and used Mattel, Inc. v. MCA Records, Inc., 296 F. 3d 894, 901 as an example. In this case, the relevant court determined that the use of “Barbie Girl” in the song was “not [as] a source identifier.” Based on these lines of thought, the Supreme Court defines the Rogers test as “a cabined doctrine: It has not insulated from ordinary trademark scrutiny the use of trademarks as trademarks.” (Jack Daniel’s Properties, INC. v. VIP Products LLC, 2023). SCOTUS then used that definition to determine that the test in question does not apply in cases in which one entity uses another’s trademark as their own due to the high likelihood of consumer confusion. The Supreme Court also rejected any arguments that the First Amendment required cases like these to be heard because marks cannot be used as source identifiers. The idea that parody is exempt from the requirements of the Rogers test is not the opinion of the superior court and goes against the express purpose of Congress’ limit on the “fair-use exclusion for parody.” (Jack Daniel’s Properties, INC. v. VIP Products LLC, 2023). The court then remanded any decision on the issue of consumer confusion in relation to standard trademark analysis to the lower courts. 

Sources: https://www.supremecourt.gov/docket/docketfiles/html/public/22-148.html  

Golde, K. (2023, February 26). Jack Daniel’s Properties, Inc. v. VIP Products LLC. SCOTUSblog. https://www.scotusblog.com/case-files/cases/jack-daniels-properties-inc-v-vip-products-llc-2/  

Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U. S. ____ (2023).