Jack Daniel’s Tennessee Whiskey squeaked out a small win at the Supreme Court on Thursday in its fight to take a set of parody dog toys off the market.
The unanimous ruling, written by Justice Elena Kagan, found the maker of the dog toys marketed as “Bad Spaniels” could not avoid a trademark infringement lawsuit just because they poke fun at the distillery.
But the opinion dodged broader questions raised in the case about how brands can control depictions of their products under trademark law, known as the Lanham Act.
“Today we choose a narrower path,” Kagan wrote. The revived lawsuit now will continue at the U.S. Court of Appeals for the 9th Circuit.
Kagan’s opinion reversed a 2020 ruling from the 9th Circuit that tossed the case. The distillery alleges the toys — replete with send-ups like subbing “Old No. 7” with “the Old No. 2, on your Tennessee Carpet” — violated Jack Daniel’s trademarked design.
Kagan wrote that the toys, made by VIP Products, do not fall under an exception in trademark law for “noncommercial use” just because they are a parody. “The use of a mark does not count as noncommercial just because it parodies, or otherwise comments on, another’s products,” Kagan wrote.
And Kagan wrote that the toys do not fall under what’s known as the “Rogers test” for expressive works. The test comes from a 1989 case, Rogers v. Grimaldi, in which the U.S. Court of Appeals for the 2nd Circuit set a higher standard for trademark infringement for expressive works like movies.
Kagan’s opinion explicitly took no position on that test, which allows for expressive products to reference trademarks without being found to infringe on them. Congress has never weighed in on the issue.
The distillery had asked the Supreme Court to wipe out the Rogers test and cut down on the ability of others to create parodies or references to trademarked products. That drew support from major brands like Levi Strauss & Co. and Nike, who filed briefs asking the court to help them crack down on knock-offs that tarnish their products.
On the other side, the Motion Picture Association argued that a ruling against the Rogers test could give major brands veto power over common cultural references.
Kagan’s opinion instead differentiated the dog toys from movies or TV shows that reference trademarked products and fall under the Rogers test.
Under the test, songs such as “Barbie Girl” can reference existing products, as can a movie character carrying a Louis Vitton bag, because they don’t try to leverage the trademark itself for their product, Kagan wrote.
But the VIP Products dog toy, because it used the Jack Daniels trademark as the source of its scatalogical humor, doesn’t fall under the Rogers test at all, Kagan wrote.
“On infringement, we hold only that Rogers does not apply when the challenged use of a mark is as a mark,” Kagan wrote.
Thursday’s opinion came after a wide-ranging oral argument this year punctuated by laughter. Though the arguments included references to a tipsy elephant, the three blind mice and whiskey bottles filled with dog urine, the justices expressed skepticism about a broad ruling in favor of major brands.
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