‘Bad Spaniels’ Dog Toy Maker Must Face Infringement Claims by Jack Daniel’s

The U.S. Supreme Court unanimously ruled that the dog toy made by VIP Products LLC, which parodied the famed whiskey maker, Jack Daniel’s, was not entitled to special First Amendment protection, even after they claimed that their work was “expressive.”

The Justices said that the Rogers test, which derives from the case, Rogers v. Grimaldi, and declares that expressive use of a trademark does not infringe if the mark is artistically relevant to the expression and the use is not explicitly misleading, did not apply.

Finnegan attorney Daniel Stringer told IP Law Daily that, “Today’s decision makes clear that when an alleged infringer has used a trademark as an indicator of source, any ‘threshold First Amendment filter,’ not merely Rogers, does not apply,” he said. “Simply because a trademark contains some expressive connotation does not short-circuit the likelihood of confusion analysis where an alleged infringer has used a mark as a source indicator. Rather, the expressive messaging should be considered as part of the likelihood of confusion analysis.”

He added that the Court’s opinion means that the dilution statute’s “fair-use” exclusion is not available when the accused party has used another’s mark to designate the source of its own goods or services, even if the infringer’s mark contains some expressive messaging. “Importantly,” Daniel explained, “although the Court described the unanimous opinion as narrow and took no position on the Rogers doctrine itself, when read with Justice Gorsuch’s concurrence noting that open questions remain over the application of Rogers in other contexts, the decision certainly restricts Rogers’ role in trademark infringement cases.”

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