Jack Daniel’s Properties, Inc. v. VIP Products LLC

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Supreme Court of the United States
Jack Daniel’s Properties, Inc. v. VIP Products LLC
Term: 2022
Important Dates
Argued: March 22, 2023
Decided: June 8, 2023
Outcome
vacated and remanded
Vote
9-0
Majority
Elena Kagan • Chief Justice John Roberts • Clarence Thomas • Samuel Alito • Sonia Sotomayor • Neil Gorsuch • Brett Kavanaugh • Amy Coney Barrett • Ketanji Brown Jackson
Concurring
Sonia Sotomayor • Samuel Alito; Neil Gorsuch • Clarence Thomas • Amy Coney Barrett

Jack Daniel’s Properties, Inc. v. VIP Products LLC is a case that was decided by the Supreme Court of the United States on June 8, 2023, during the court's October 2022-2023 term. The case was argued before the court on March 22, 2023.

In a unanimous ruling issued on June 8, 2023, the court vacated the United States Court of Appeals for the 9th Circuit's ruling and remanded the case for further proceedings, holding first that "when an alleged infringer uses a trademark as a designation of source for the infringer’s own goods, the Rogers v. Grimaldi (1989) test does not apply," and secondly, that "The Lanham Act’s exclusion from dilution liability for “[a]ny non-commerical use of a mark,” §1125(c)(3)(C), does not shield parody, criticism, or commentary when an alleged diluter uses a mark as a designation of source for its own goods."[1] Justice Elena Kagan delivered the majority opinion of the court. Justice Sonia Sotomayor filed a concurring opinion, joined by Justice Samuel Alito. Justice Neil Gorsuch authored a concurring opinion, joined by Justices Clarence Thomas and Amy Coney Barrett.[1] Click here for more information about the ruling.

HIGHLIGHTS
  • The issue: The case concerned trademark infringement claims and commercial products that parody other commercial products. Click here to learn more about the case's background.
  • The questions presented:
    1. "Whether humorous use of another's trademark as one's own on a commercial product is subject to the Lanham Act's traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims.
    2. "Whether humorous use of another's mark as one's own on a commercial product is "noncommercial" under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act."[2]
  • The outcome: The U.S. Supreme Court vacated the United States Court of Appeals for the 9th Circuit's ruling and remanded the case for further proceedings.


    • The case came on a writ of certiorari to the United States Court of Appeals for the 9th Circuit. To review the lower court's opinion, click here.

    Timeline

    The following timeline details key events in this case:

    Background

    VIP Products LLC ("VIP") manufactures dog toys that resemble Jack Daniel's Tennessee Whiskey bottles. Jack Daniel's Properties, Inc. ("Jack Daniel's") sued VIP for brand tarnishment and violating U.S. trademark law. VIP claimed that the products spoof Jack Daniel's products, and are protected under the First Amendment. The United States District Court for the District of Arizona found in VIP's favor. A three-judge panel of the United States Court of Appeals for the 9th Circuit affirmed the District of Arizona's ruling. Jack Daniel's appealed the ruling to the U.S. Supreme Court on August 5, 2022. SCOTUS granted review in the case on November 21, 2022.[3][4][5]

    Lanham Act's traditional likelihood-of-confusion analysis

    The Lanham Act’s traditional likelihood-of-confusion analysis, 15 U.S.C. § 1125(a)(1), states:[6]

    “ (a) Civil action

    (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which-

    (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
    (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.[7]
    		 ”

    Trademark Dilution Revision Act

    The Trademark Dilution Revision Act, 15 U.S.C. § 1125(c)(3)(C), states:[8]

    “ (c) Dilution by blurring; dilution by tarnishment

    (3) Exclusions The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:

    (C) Any noncommercial use of a mark.[7]

    		”

    Questions presented

    The petitioner presented the following questions to the court:[2]

    Questions presented:
    “
    1. Whether humorous use of another's trademark as one's own on a commercial product is subject to the Lanham Act's traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims.
    2. Whether humorous use of another's mark as one's own on a commercial product is "noncommercial" under 15 U.S.C. § 1125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act.[7]
    		 ”

    Oral argument

    Audio

    Audio of oral argument:[9]




    Transcript

    Transcript of oral argument:[10]

    Outcome

    In a unanimous ruling released on June 8, 2023, the court vacated the United States Court of Appeals for the 9th Circuit's ruling and remanded the case for further proceedings, holding holding first that "when an alleged infringer uses a trademark as a designation of source for the infringer’s own goods, the Rogers v. Grimaldi (1989) test does not apply," and secondly, that "The Lanham Act’s exclusion from dilution liability for “[a]ny non-commerical use of a mark,” §1125(c)(3)(C), does not shield parody, criticism, or commentary when an alleged diluter uses a mark as a designation of source for its own goods."[1] Justice Elena Kagan delivered the majority opinion of the court. Justice Sonia Sotomayor filed a concurring opinion, joined by Justice Samuel Alito. Justice Neil Gorsuch authored a concurring opinion, joined by Justices Clarence Thomas and Amy Coney Barrett.[1]

    Opinion

    In the court's majority opinion, Justice Elena Kagan wrote:[1]

    “ This case is about dog toys and whiskey, two items seldom appearing in the same sentence. Respondent VIP Products makes a squeaky, chewable dog toy designed to look like a bottle of Jack Daniel’s whiskey. Though not entirely. On the toy, for example, the words “Jack Daniel’s” become “Bad Spaniels.” And the descriptive phrase “Old No. 7 Brand Tennessee Sour Mash Whiskey” turns into “The Old No. 2 On Your Tennessee Carpet.” The jokes did not impress petitioner Jack Daniel’s Properties. It owns trademarks in the distinctive Jack Daniel’s bottle and in many of the words and graphics on the label. And it believed Bad Spaniels had both infringed and diluted those trademarks. Bad Spaniels had infringed the marks, the argument ran, by leading consumers to think that Jack Daniel’s had created, or was otherwise responsible for, the dog toy. And Bad Spaniels had diluted the marks, the argument went on, by associating the famed whiskey with, well, dog excrement.


    The Court of Appeals, in the decision we review, saw things differently. Though the federal trademark statute makes infringement turn on the likelihood of consumer confusion, the Court of Appeals never got to that issue. On the court’s view, the First Amendment compels a stringent threshold test when an infringement suit challenges a so-called expressive work—here (so said the court), the Bad Spaniels toy. And that test knocked out Jack Daniel’s claim, whatever the likelihood of confusion. Likewise, Jack’s dilution claim failed—though on that issue the prob- lem was statutory. The trademark law provides that the “noncommercial” use of a mark cannot count as dilution. 15 U. S. C. §1125(c)(3)(C). The Bad Spaniels marks, the court held, fell within that exemption because the toy communicated a message—a kind of parody—about Jack Daniel’s.
    Today, we reject both conclusions. The infringement issue is the more substantial. In addressing it, we do not decide whether the threshold inquiry applied in the Court of Appeals is ever warranted. We hold only that it 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. That kind of use falls within the heartland of trademark law, and does not receive special First Amendment protection. The dilution issue is more simply addressed. The use of a mark does not count as noncommercial just because it parodies, or otherwise comments on, another’s products. ...

    ... Today’s opinion is narrow. We do not decide whether the Rogers test is ever appropriate, or how far the “noncommercial use” exclusion goes. On infringement, we hold only that Rogers does not apply when the challenged use of a mark is as a mark. On dilution, we hold only that the noncommercial exclusion does not shield parody or other commentary when its use of a mark is similarly source-identifying. It is no coincidence that both our holdings turn on whether the use of a mark is serving a source-designation function. The Lanham Act makes that fact crucial, in its effort to ensure that consumers can tell where goods come from.
    For the reasons stated, we vacate the judgment below and remand for further proceedings consistent with this opinion.[7]

    		”
    —Justice Elena Kagan

    Concurring opinions

    Justice Sotomayor

    Justice Sonia Sotomayor filed a concurring opinion, joined by Justice Samuel Alito.

    In her concurring opinion, Justice Sotomayor wrote:[1]

    “ I join the Court’s opinion in full. I write separately to emphasize that in the context of parodies and potentially other uses implicating First Amendment concerns, courts should treat the results of surveys with particular caution. As petitioner did here, plaintiffs in trademark infringement cases often commission surveys that purport to show that consumers are likely to be confused by an allegedly infring- ing product. Like any other evidence, surveys should be understood as merely one piece of the multifaceted likelihood of confusion analysis. See, e.g., Uncommon, LLC v. Spigen, Inc., 926 F. 3d 409, 425 (CA7 2019). Courts should also carefully assess the methodology and representativeness of surveys, as many lower courts already do. See, e.g., Water Pik, Inc. v. Med-Systems, Inc., 726 F. 3d 1136, 1144–1150 (CA10 2013); Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F. 3d 97, 117 (CA2 2009). ...


    Allowing such survey results to drive the infringement analysis would risk silencing a great many parodies, even ones that by other metrics are unlikely to result in the confusion about sourcing that is the core concern of the Lanham Act. See ante, at 4, 10, 14. Well-heeled brands with the resources to commission surveys would be handed an effective veto over mockery. After all, “[n]o one likes to be the butt of a joke, not even a trademark.” 6 J. McCarthy, Trademarks and Unfair Competition §31:153 (5th ed. 2023). This would upset the Lanham Act’s careful balancing of “the needs of merchants for identification as the provider of goods with the needs of society for free communication and discussion.” P. Leval, Trademark: Champion of Free Speech, 27 Colum. J. L. & Arts 187, 210 (2004). Courts should thus ensure surveys do not completely displace other likelihood-of-confusion factors, which may more accurately track the experiences of actual consumers in the marketplace. Courts should also be attentive to ways in which surveys may artificially prompt such confusion about the law or fail to sufficiently control for it.[7]

    		”
    —Justice Sonia Sotomayor

    Justice Gorsuch

    Justice Neil Gorsuch filed a concurring opinion, joined by Justices Clarence Thomas and Amy Coney Barrett.

    In his concurring opinion, Justice Gorsuch wrote:[1]

    “ I am pleased to join the Court’s opinion. I write separately only to underscore that lower courts should handle Rogers v. Grimaldi, 875 F. 2d 994 (CA2 1989), with care. Today, the Court rightly concludes that, even taken on its own terms, Rogers does not apply to cases like the one before us. But in doing so, we necessarily leave much about Rogers unaddressed. For example, it is not entirely clear where the Rogers test comes from—is it commanded by the First Amendment, or is it merely gloss on the Lanham Act, perhaps inspired by constitutional-avoidance doctrine? Id., at 998. For another thing, it is not obvious that Rogers is correct in all its particulars—certainly, the Solicitor General raises serious questions about the decision. See Brief for United States as Amicus Curiae 23–28. All this remains for resolution another day, ante, at 13, and lower courts should be attuned to that fact.[7] ”
    —Justice Neil Gorsuch

    Text of the opinion

    Read the full opinion here.


    October term 2022-2023

    See also: Supreme Court cases, October term 2022-2023

    The Supreme Court began hearing cases for the term on October 3, 2022. The court's yearly term begins on the first Monday in October and lasts until the first Monday in October the following year. The court generally releases the majority of its decisions in mid-June.[11]


    See also

    External links

    Footnotes

    1. ↑ 1.0 1.1 1.2 1.3 1.4 1.5 1.6 U.S. Supreme Court, Jack Daniel’s Properties, Inc. v. VIP Products LLC, decided June 8, 2023
    2. ↑ 2.0 2.1 U.S. Supreme Court, "22-148 JACK DANIEL'S PROPERTIES, INC. V. VIP PRODUCTS LLC QUESTIONS PRESENTED:," Cert. Granted November 21, 2022
    3. ↑ 3.0 3.1 U.S. Court of Appeals for the 9th Circuit, VIP Products LLC v. Jack Daniel's Properties, Inc., decided March 18, 2022
    4. ↑ U.S. Supreme Court, "Jack Daniel’s Properties, Inc. v. VIP Products LLC: PETITION FOR A WRIT OF CERTIORARI," filed August 5, 2022
    5. ↑ SCOTUSblog, "Justices fetch new case on trademark law and parody," November 21, 2022
    6. ↑ Casetext, "15 U.S.C. § 1125, Section 1125 - False designations of origin, false descriptions, and dilution forbidden," accessed February 2, 2023
    7. ↑ 7.0 7.1 7.2 7.3 7.4 7.5 Note: This text is quoted verbatim from the original source. Any inconsistencies are attributable to the original source.
    8. ↑ Casetext, "15 U.S.C. § 1125, Section 1125 - False designations of origin, false descriptions, and dilution forbidden," accessed February 2, 2023
    9. ↑ Supreme Court of the United States, "Oral Argument - Audio," argued March 22, 2023
    10. ↑ Supreme Court of the United States, "Oral Argument - Transcript," argued March 22, 2023
    11. ↑ SupremeCourt.gov, "The Supreme Court at Work: The Term and Caseload," accessed January 24, 2022
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