Jack Daniel’s Tennessee Whiskey squeaked out a small victory in the Supreme Court on Thursday in its battle to remove a set of parody dog toys from the market.
The unanimous decision, written by Justice Elena Kagan, found that the maker of dog toys marketed as “Bad Spaniels” could not avoid a trademark infringement lawsuit simply because they were poking fun at the distillery.
But the opinion avoided the broader question raised in the case about how brands can control descriptions of their products under trademark law, known as the Lanham Act.
“Now we will choose a narrower path,” Kagan wrote. The revived case will now proceed to the US Court of Appeals for the 9th Circuit.
Kagan’s opinion overturned a 2020 decision from the 9th Circuit that had thrown out the case. The distillery says the toys — full of send-ups like subbing “Old No. 7” of “Old No. 2, on your Tennessee Carpet” — infringes on Jack Daniel’s trademarked design.
Kagan wrote that the toys, made by VIP Products, are not subject to an exception to trademark law for “non-commercial use” simply because they are a parody. “Use of a mark does not count as noncommercial merely because it parodies, or otherwise comments on, the products of others,” Kagan wrote.
And Kagan wrote that toys do not fall under the so-called “Rogers test” for expressive works. The test comes from a 1989 case, Rogers v. Grimaldi, where the US Court of Appeals for the 2nd Circuit set a higher standard for trademark infringement for expressive works such as movies.
Kagan’s opinion expressly takes no position on that test, which allows for expressive products to refer to trademarks without appearing to infringe on them. Congress never weighed in on the issue.
The distillery asked the Supreme Court to wipe out the Rogers test and limit the ability of others to create parodies or references to trademarked products. That got support from major brands like Levi Strauss & Co. and Nike, which filed briefs asking the court to help them crack down on knock-offs that damage their products.
On the other hand, the Motion Picture Association argued that a ruling against the Rogers test could give major brands veto power over common cultural references.
Instead, Kagan’s opinion distinguished the dog toys from the movies or TV shows that referred to the products trademarked and under Rogers’ test.
Under the test, songs like “Barbie Girl” can refer to existing products, such as a movie character carrying a Louis Vitton bag, because they are not trying to use the trademark itself for their product, wrote said Kagan.
But VIP Products’ toy dog, because it used the Jack Daniels trademark as the source of its catalogical humor, was not subject to the Rogers test, Kagan wrote.
“On infringement, we hold only that Rogers does not apply when the challenged use of a mark is as a mark,” Kagan wrote.
Thursday’s opinion came after extensive oral arguments this year punctuated with laughter. Although the arguments included references to a tipsy elephant, three blind mice and whiskey bottles filled with dog urine, the justices expressed skepticism about a sweeping decision in favor of the main brand.
