INTA Amicus Asks U.S. Supreme Court to Take Up Jack Daniel’s Case

Published: December 16, 2020

Robert D. Carroll Goodwin Procter LLP Boston, Massachusetts, USA International Amicus Committee—United States Amicus Subcommittee

[Editor’s Note: As the deadline for the respondent to oppose the petition for certiorari in this case is today, we are reporting on INTA’s submission in support of the petition.]

INTA filed an amicus brief asking the U.S. Supreme Court to take a case in which whiskey producer Jack Daniel’s contested a dog toy that plays off the whiskey’s trademark. INTA argued that an appeals court decision allowing the toy’s use parted company from other U.S. courts by applying expanded First Amendment defenses to commercial goods.

INTA filed the amicus brief on October 19, 2020, in support of the petition for certiorari in Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 20-365.

Five other amici curiae joined INTA in filing briefs in support of the petition for certiorari. The respondent’s deadline to oppose the petition is December 16, 2020.

Facts and Procedural History

This case involves a dispute between Jack Daniel’s and VIP Products, a large producer of dog toys.

VIP Products distributed a dog toy named Bad Spaniels Silly Squeaker, which resembled the iconic Jack Daniel’s bottle. After receiving a letter from Jack Daniel’s, VIP Products filed a declaratory judgment action for non-infringement, and Jack Daniel’s counterclaimed, alleging, among other claims, trademark infringement and dilution by tarnishment.

This dispute involves the appropriate balancing of the goals of trademark law: providing consumers with accurate information and avoiding deceptive advertising, with the protections that the First Amendment to the U.S. Constitution provides to certain works.

The U.S. District Court for the District of Arizona ruled in favor of Jack Daniel’s and issued a permanent injunction enjoining VIP Products from manufacturing and selling the Bad Spaniels Silly Squeaker toy. The district court examined the test established by the New York-based U.S. Court of Appeals for the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994, 1005 (2d Cir. 1989), and determined it did not provide a defense to VIP Products because it is limited to expressive works.

In Rogers, which concerned the use of a trademark in the title of a film, the Second Circuit held that titles of artistic works do not infringe unless (1) the title has no artistic relevance to the underlying work; or (2) the title misleads as to the source of the work. Courts in other circuits have applied the Rogers test in different contexts but have declined to extend it to commercial goods.

VIP appealed the decision to the U.S. Court of Appeals for the Ninth Circuit, which reversed the district court’s application of the Rogers test. The court held that the Bad Spaniels Silly Squeaker toy was an “expressive work,” that used the JACK DANIEL’S design and mark to convey a “humorous message,” that was protected by the First Amendment. The Court of Appeals reversed the judgments of both infringement and dilution.

Jack Daniel’s filed a petition for certiorari in the U.S. Supreme Court on September 15, 2020, which requests that the Court take up the case.

INTA’s Amicus Brief in Support of the Petition

INTA’s amicus brief urges the Supreme Court to grant the petition for certiorari on two grounds.

First, the brief asks the Court to take the case to resolve a split among judicial circuits that the Ninth Circuit created with its decision. In its brief, INTA argues that the Ninth Circuit has split with every other court that has considered the question of whether the Rogers framework should apply to commercial goods in the context of trademark infringement. Until the Ninth Circuit extended the Rogers test to the Bad Spaniels Silly Squeaker toy, courts in each of the Fourth, Fifth, Sixth, Seventh, Eighth, Tenth, and Eleventh Circuits declined to do so.

Second, INTA’s brief asks the Court to take the case because of the Ninth Circuit’s application of the Trademark Dilution Revision Act, as well as the Court’s precedents concerning commercial speech.

INTA’s brief takes no position on the merits of the underlying infringement and dilution dispute but urges the Court to take the case to clarify the proper legal standards to be applied.

Three members of INTA’s U.S. Amicus Subcommittee contributed to INTA’s brief: Subcommittee Chair David H. Bernstein (Debevoise & Plimpton LLP, USA), Jennifer Gregor (Gregor & Kahn, S.C., USA), and Vijay K. Toke (Pillsbury Winthrop Shaw Pittman LLP, USA).

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

© 2020 International Trademark Association