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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First, a big “thank you” to all our readers who have given feedback on our newsletter. We appreciate your interest and insights. It is always a treat to hear from you! Second, we wanted to provide you with updates on some of our most popular articles
How will you be celebrating World IP Day on April 26th? Finny will be swimming around the world testing the cleanliness of our waters and visiting his friends under the sea because this year’s topic is “Sustainable Development Goals” (or “SDGs” for short).
Climate change has increasingly dominated daily news cycles, signaling a growing urgency for action. The escalation of temperatures during the hottest months serves as a stark reminder of the immediate need for solutions.
President Donald Trump recently began promoting a brand-new pair of limited edition sneakers for sale bearing a T logo, American flag design, gold upper, and red sole bottom. Surprisingly, the Never Surrender High-Tops bear a striking resemblance to these high-end fashion sneakers manufactured and sold by famous footwear designer Christian Louboutin.
The issue of deepfakes has been making headlines as the US enters another presidential election cycle, due largely to concerns over the potentially deleterious effects of misinformation on voters.
“Palworld”— a computer game created and published by Japanese developer Pocket Pair. Released as an early access game in January 2024, it sold over seven million copies on the computer platform Steam in the first five days and had nearly 20 million players in the first two weeks.
This year’s Super Bowl featured a thrilling overtime victory for the Kansas City Chiefs over the San Francisco 49ers. With estimates as high as 123 million viewers, America's premier sporting event also serves as a grand stage for creativity and intellectual property protections that enhance the game’s success.
Valentine’s Day is just around the corner and jewelry sales are usually around $6 billion USD in the United States alone. In 2021, the US Customs and Border Protection agency seized over $1 billion USD worth of counterfeit pieces of jewelry.
Detroit Lions In Copyright Dispute Over Barry Sanders Statue
Fish Tank: Newsletter Volume 24, Issue 3
This season marked many ‘firsts’ for the Lions including unveiling the first statue at Ford Field immortalizing a former Lion: Barry Sanders. However, some may not consider the Sanders statue a clear ‘win’ for the Detroit Lions franchise.
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