Intellectual Property Insights from Fishman Stewart PLLC
Newsletter – Volume 23, Issue 13
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Supreme Court to VIP: Bad Spaniels, Bad.
In a rare unanimous decision, the Supreme Court sided with Jack Daniel’s Properties, reversing the Ninth Circuit decision that found VIP Products’ dog chew toy (shown on the right, below) a non-infringing parody of the trademark rights Jack Daniel’s holds in its name JACK DANIEL’S, OLD NO. 7, the label, and bottle design (shown on the left, below). 
As my colleague Michelle L. Visser previously wrote, the Supreme Court had a rare bit of fun in the hearings for this case. This time, the fun was all of the whiskey-toasting variety!
The Supreme Court’s opinion was crafted narrowly and, in this writer’s opinion, reasonably. It saw the key issue as this: VIP Products used BAD SPANIELS and similar trade dress (bottle shape and label design) as source identifiers (as trademarks) for the goods—points VIP conceded. As the Supreme Court said, that meant the protective legal test for parody and the statutory carve-out from dilution liability both were inapplicable here.
The packaging which VIP Products used for its dog toys displayed BAD SPANIELS as a trademark (shown below), and the Court particularly noted the packaging in reversing the Ninth Circuit.
Ultimately, the Supreme Court struck a very thoughtful balance, protecting trademarks from being traded on by others without having to wade into issues for protection of speech for non-trademark-use parodies.
So, take heart, doggy-do parody lovers, there’s still Schlitz beer which remains ripe for a second go at the Old No. 2 pun. Just, don’t use a mark to hit that mark (and consult with an attorney first!). In all seriousness, this case preserved protections for expression in commerce, even noting that often trademarks are highly expressive beyond their source-identifying attributes, and that’s what the federal trademark act protects. While the line between free speech and trademark infringement is sometimes difficult to decipher, the opinion of the Justices here stands out for its care in achieving a narrow—and unanimous—decision.
Alexander JSW Johnson is an attorney at Fishman Stewart with more than 10 years of extensive experience in trademark and intellectual property matters. He works in the firm’s Trademark Practice Group. He holds a B.A. in Art (studio emphasis) and Journalism. Check out his full bio here.
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