Jack Daniel’s Tells SCOTUS Rogers Test is Unworkable, U.S. Brands’ Identities Are at Risk

“VIP has not explained why its message is more deserving than Jack Daniel’s message, Jack Daniel’s goodwill, or the public’s interest in not being misled.” – Jack Daniel’s Reply Brief

Jack Daniel’s Properties, Inc. filed its reply brief with the U.S. Supreme Court on Friday, March 10, in a major trademark case set to be argued on March 22.

The brief contends that the country’s most popular brands are at risk of losing their brand identity if the Court affirms the U.S. Court of Appeals for the Ninth Circuit’s view that a poop-themed dog toy mimicking Jack Daniel’s Whiskey bottle is an expressive work entitled to First Amendment protection.

In November 2022, the Supreme Court granted Jack Daniel’s petition for a writ of certiorari, which seeks to clarify whether the First Amendment protects VIP Products, LLC’s humorous use of Jack Daniel’s trademarks for commercial purposes against claims of infringement and dilution.

The High Court previously denied Jack Daniel’s petition in January of 2021, and the U.S. Court of Appeals for the Ninth Circuit “summarily affirmed” the district court’s summary judgment ruling for VIP on remand. In its ruling in 2020, the Ninth Circuit said VIP’s dog toy mimicking a Jack Daniel’s whiskey bottle was an expressive work entitled to First Amendment protection, reversing the district court’s initial holding that the toy infringed and diluted Jack Daniel’s marks and remanding the case back to the district court for a determination on the merits of the infringement claim. According to Jack Daniel’s, the district court then “begrudgingly entered summary judgment” for VIP Products and the Ninth Circuit summarily affirmed. Jack Daniel’s then filed a second SCOTUS petition.

The majority of amici who have weighed in thus far are asking the Court to reverse the Ninth Circuit’s ruling and to limit the application of Rogers v. Grimaldi, which attempts to balance free speech and trademark rights, to clearly artistic works.

But in its response brief filed in October 2022, VIP accused Jack Daniel’s of “waging war” against it and said, “It is ironic that America’s leading distiller of whiskey both lacks a sense of humor and does not recognize when it—and everyone else—has had enough.”

Jack Daniel’s Reply

In the March 10 filing, Jack Daniel’s told the Court that “affirmance would sidestep Congress’ meticulous protections for trademarks, enabling profiteers to misappropriate marks to create their own brands, regardless of serious customer confusion or mistaken association with incompatible brands.” While it said no one is disputing that VIP’s product is an attempt to be funny, “alcohol and toys don’t mix well, and the same is true for beverages and excrement.”

Jack Daniel’s argues that Rogers “is neither settled nor workable” and that there is a split among the circuit courts on whether to adopt it at all, or how to apply it if adopted. The brief dismissed VIP’s argument that Rogers should apply when consumers buy products that include “artistic expression” on “fictional products” as contrasted with “nonparodic goods” using “pun-based trademarks,” explaining that the “Bad Spaniels” toy is not a “pretend” trademark. Rather, says Jack Daniel’s, “it is a real dog toy, sold by a real company in real stores, used by real dogs.”

The Ninth Circuit’s application of the Rogers test would extend to anything that communicates ideas or expresses points of view, which would encompass not only humorous toys, but ones that express messages of “sympathy, romance, dystopia, erotica, etc.,” says the brief. Furthermore, the test has no bounds as to the medium of expression, with some amici suggesting Rogers should apply only to book and movie titles, nut not their contents, while others suggest it applies to the contents of movies and songs and greeting cards.

Furthermore, Rogers actually creates problems, by “categorically favor[ing] infringers’ speech over mark owners’ speech, even though both are expressive,” says Jack Daniel’s. “VIP has not explained why its message is more deserving than Jack Daniel’s message, Jack Daniel’s goodwill, or the public’s interest in not being misled.” The brief notes that parody does not require confusion, as demonstrated in Campbell v. Acuff-Rose Music, Inc., where the group 2 Live Crew’s version of Roy Orbison’s well-known song, Pretty Woman, was deemed to be a parodic use of the original work that would not confuse listeners.

The brief also rejects VIP’s attempt to “relitigate” the district court’s factual findings of likely confusion and says that the Ninth Circuit’s and VIP’s reading of the dilution statute is wrong. Noncommercial use does not extend to using marks to sell products, says the brief, and the First Amendment does not support Rogers.

A number of amici in support of VIP filed briefs in late February, including the Electronic Frontier Foundation, which argued that “discarding the Rogers test would be a mistake…. Trademarks are ubiquitous in the modern world, and the same attributes that make them useful for identifying the source of goods or services also make them a powerful expressive tool for commenting on their owners and society.”

On March 9, VIP also filed a motion for leave to file ten Silly Squeakers “Bad Spaniels” dog toys in order to assist the Court in understanding the nature of the toys. On March 6, the Court granted the U.S. Solicitor General’s request to participate in oral argument, but denied the Motion Picture of America’s motion for the same.


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