By: John Murphy

On June 8, 2023, the United States Supreme Court considered parody as a defense to trademark infringement and dilution, in Jack Daniel’s Properties, Inc. v. VIP Products LLC, Case No. 22-148.

VIP Products sold a chewable dog toy that closely resembled a bottle of Jack Daniel’s whisky.  The label text parodied several of Jack Daniel’s marks – for example, it replaced JACK DANIEL’S with BAD SPANIELS.

Jack Daniel’s sued VIP for trademark infringement and dilution.  VIP argued that its dog toy was an expressive work protected by the First Amendment to the US Constitution (which protects freedom of speech and artistic expression).

The case made its way to the Supreme Court.  In a rare unanimous decision, the Court held:

  1. The First Amendment is not a defense to trademark infringement “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.” Despite its protestations, VIP was using BAD SPANIELS, and other matter on the label, to indicate the source of its product.  Thus, its toy was not protected under the First Amendment.
  2. Similarly, “because VIP used the challenged marks as source identifiers, it could not benefit from the fair-use exclusion for parody” as a defense to Jack Daniel’s trademark dilution claim.
  3. Although VIP’s dog toy was not protected by the First Amendment, “a trademark’s expressive message – particularly a parodic one, as VIP asserts – may properly figure in assessing the likelihood of confusion.” VIP was free to argue that consumers are not confused by its dog toy because it is obviously a parody, rather than a product produced by or with the permission of Jack Daniel’s.

Plaintiffs in parody cases often rely on surveys that ask respondents whether the defendant needed the plaintiff’s permission to sell the product.  In a concurring opinion, Justice Sotomayor warned that “courts should treat the results of [such] surveys with particular caution,” because an affirmative response may reflect “a mistaken belief…that all parodies require permission from the owner of the parodied mark.”  Justice Sotomayor went on to state:

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…Well-heeled brands with the resources to commission surveys would be handed an effective veto over mockery…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.

The Supreme Court remanded the case to the lower courts for further proceedings consistent with its decision.