Jack Daniel’s Properties, Inc. v. VIP Products LLC

By Staff June 8, 2023

Decided: June 8, 2023
Citation: Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. ___ (2023)
Appeal from: Ninth Circuit
Case document: Jack Daniel’s Properties v. VIP Products LLC

Facts of the case
Dog toy company VIP Products created a line of toys titled “Silly Squeakers,” resembling well-known alcoholic beverages. The stuffed toys visually replicate the drinks, except their names are spin-offs, such as “Bad Spaniels” instead of Jack Daniels. Instead of the phrase “Old No. 7 Brand Tennessee Sour Mash Whiskey” written on the bottle, the Jack Daniel’s-themed toy read “Old No. 2 on your Tennessee carpet.” After seeing the dog toy, Jack Daniel’s Properties, Inc. filed a lawsuit against VIP Products, alleging the company engaged in trademark infringement and trademark dilution. After the U.S. District Court for the District of Arizona ruled in favor of Jack Daniel’s Properties, Inc., VIP Products appealed to the Ninth Circuit. The Court of Appeals reversed the decision, leading Jack Daniels to petition to the Supreme Court.

Question for the Court
This case asked the Court to consider whether a parody of a product is exempt from fair-use limits and whether the product should receive heightened First Amendment protection as a form of expressive conduct.

Decision
In a unanimous decision, the Court ruled that VIP Products violated trademark law with its parody toy of a Jack Daniel’s Properties, Inc. product. Justice Kagan authored the opinion, writing, “We hold only 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.” Justice Sotomayor filed a concurring opinion in which Justice Alito joined. Justice Gorsuch also filed a concurring opinion in which Justice Barrett and Thomas joined.

Free press implications
The ruling emphasized that creative media does not receive preferential treatment when it comes to trademark use. This leaves open the potential for abuse of trademark rights to chill protected speech when a party disagrees with a message’s viewpoint. In Justice Gorsuch’s opinion, he raised questions on the Rogers v. Grimaldi test, which is applied to protect free speech. The removal or further limiting of the test would drastically shift how the media messages brands.

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