Supreme court tells dog company they can't mimic Jack Daniels

On Thursday 8 June, the US Supreme Court ruled in favour of Jack Daniels during a trademark dispute with a dog accessory company.

The company, VIP Products, sold the chew toy ‘Bad Spaniels’ which parodied Jack Daniel’s widely recognised whiskey bottle.

The 9-0 decision threw out the lower court’s ruling that the vinyl chew toy is protected by the First Amendment and is “expressive work”. Justice Elena Kagan said that the use of the Rogers test, a precedent used for assessing the use of trademarks in artistic expression, did not apply to VIP’s products.

The Rogers test was crafter during the 1989 case of Rogers vs Grimaldi. Performer Ginger Rogers made a case against the producers and distributors of the film Ginger and Fred for creating a false impression of her involvement in the production.

Rogers lost her case after the court favoured the defendants’ arguments that the film was a work of artistic expression, not a commercial product.

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Justice Kagan wrote that the Rogers test 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.”

Doug Masters, a partner at Loeb & Loeb, said the supreme court’s decision suggested that parody products may not be able to rely on the Rogers test if they are accused of infringement if their products are “intended to be a commercial product, even if there’s some expression beyond just the commerce part of it.”

In 2020, an appeals court ruled in favour of VIP Products on two grounds. It found the chew toy was “expressive work” defended by the First Amendment. It also argued that VIP Product’s use of Jack Daniel’s trademark was non-commercial because it was used “to convey a humorous message” and therefore had not tarnished the distiller’s trademark.

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