Jack Daniel’s showdown arrives at SCOTUS

March 27, 2023 – Media Mention
World Intellectual Property Review

Barry Werbin, counsel in Herrick's Intellectual Property Group, was quoted in the World Intellectual Property Review regarding the oral arguments before the Supreme Court in a matter that "assesses whether VIP Products’ ‘Bad Spaniels Silly Squeaker’ toy, which looks like the famous Jack Daniel’s whiskey bottle but with alternate text reflecting light-hearted dog puns, infringes Jack Daniel’s well-known mark." As the article describes, the "case tests the boundaries of the parody and artistically relevant defenses under the First Amendment in trademark infringement and dilution disputes."

As Werbin told WIPR, "the result could be game-changing."

“Here, the defendant’s product mimics a plaintiff’s famous registered mark but on goods that are completely unrelated to the plaintiff’s goods, to create a humorous or parodic juxtaposition with the plaintiff’s mark and goods,” explains Werbin.

“Until this case arose, most federal courts had limited such heightened First Amendment protection to artistically relevant expressive works, such as films and books, but the Ninth Circuit applied the test here to a commercial toy product.”

The article notes that one key aspect of the case needs to be determined by the court, namely, "whether the commercial nature of the toy (and commercial products generally) overrides the humorous nature of the goods so as to preclude a First Amendment defense."

Second, the article notes that "it needs to assess whether such use should be deemed ‘non-commercial’ under the federal dilution statute so as to bar a dilution claim by tarnishment."

Werbin added that "[t]he Supreme Court’s decision will be critical in defining more clearly the types of humorous and parodic uses of others’ trademarks that should qualify for First Amendment protection in infringement and dilution cases."

Werbin further predicted that “[t]he court will likely clarify the types of ‘expressive works’ that would qualify for heightened First Amendment protection in such circumstances.

Read the full article in World Intellectual Property Review here. Access may require a subscription.