Supreme Court sides with Jack Daniels in trademark fight against poop

by: Zach Schonfeld, The Hill Posted: Jun 8, 2023 / 12:01 PM EDT

by: Zach Schonfeld, The Hill

Posted: Jun 8, 2023 / 12:01 PM EDT

Updated: Jun 8, 2023 / 01:19 PM EDT

The Supreme Court on Thursday sided with Jack Daniel's in its trademark fight against a poop-themed dog toy that parodies the company's whiskey bottles.

In a unanimous decision authored by Justice Elena Kagan, the high court ruled for the whiskey maker but left unaddressed whether the First Amendment provides parodies with heightened protections from trademark-infringement claims.

The Supreme Court has never endorsed the premise, known as the Rogers test, and the justices ruled it wouldn't apply to the dog toy, so they didn't have to weigh in on its validity.

VIP Products LLC's toy replaced the famed "Jack Daniel's" typography with "Bad Spaniels." It further swapped "Old No. 7 brand" and "Tennessee Sour Mash Whiskey" with "The Old No. 2 on Your Tennessee Carpet."

"This case is about dog toys and whiskey, two items seldom appearing in the same sentence," Kagan wrote for the court.

Kagan showed amusement at the court while reading the opinion on Thursday, at one point singing "Barbie Girl" as she compared the dispute to a hypothetical about the doll maker.

It capped a case that provided a rare dose of humor to the court. During oral argument, the justices frequently laughed on the bench as they discussed "Debbie Does Dallas," toilet humor and shirts with drunk donkeys and elephants representing the Democratic and Republican political parties.

Jack Daniel's appeal to the justices received the backing of prominent companies like Nike, Campbell Soup Company and Patagonia, who all raised concerns a decision the other way could tarnish their brands.

Under federal law, trademark infringement claims traditionally involve asking whether consumers are likely to be confused by a product's use of a protected mark.

But a lower court ruled against Jack Daniels by instead using the Rogers test, which arose out of a 1989 case and seeks to balance trademark claims against expressive works. It gives them heightened protections rooted in the First Amendment rather than the traditional test.

Many lower courts have adopted the test in the years since, and the Jack Daniel's case provided an opportunity for the justices to endorse it or banish it. But the justices sidestepped the question, leaving the dispute unresolved.

"Today we choose a narrower path," Kagan wrote.

"Without deciding whether Rogers has merit in other contexts, we hold that it does not when an alleged infringement uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer's own goods … VIP used the marks derived from Jack Daniel's in that way," she continued.

Justice Neil Gorsuch, in a concurring opinion joined by fellow conservative justices Clarence Thomas and Amy Coney Barrett, cast doubt on the Rogers test in other cases, writing "it is not entirely clear" where it comes from.

The unanimous majority further ruled in favor of Jack Daniel's in its trademark dilution claims, which were brought under a different federal law. A lower court found the Bad Spaniels product's humor made it fall under a "noncommercial" exception to the law.

"The dilution issue is more simply addressed," Kagan said. "The use of a mark does not count as noncommercial just because it parodies, or otherwise comments on, another's products."

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Supreme Court sides with Jack Daniels in trademark fight against poop