High Court Dog Toy Case Ushers in ‘Exciting’ Trademark Law Year

There are two major developments at the US Supreme Court that trademark practitioners are eyeing in 2023 - the fate of whether the First Amendment protects a poop-joke dog toy shaped like the iconic Jack Daniel’s whiskey bottle as well as a question to the territorial reach of the Lanham Act after an appeals court awarded profits from foreign sales of Hetronic-branded radios.

Finnegan partner Mark Sommers told Bloomberg Law that this will be “an exciting year” as both high court cases could have big impacts on practitioners and litigants. As it relates to the Jack Daniel’s appeal, Mark said the court’s resolution of another intellectual property-meets-First Amendment case would be telling, even though it’s a copyright case.

“If you think that they struggled with transformative art, how do you think the Supremes are going to struggle with defining ‘what is humor’?” Mark said. “We’re all sitting on the edges of our seats, wanting the Supreme Court to give us guidance. Because the existing framework is such that it gives the litigant very little assurance and confidence in the arguments that can be made.”

A critical component of the Jack Daniels case is the Rogers test - a measure that allows trademark use in expressive works if it’s artistically relevant and not explicitly misleading, without consumer confusion analysis needed. Some assert that issues should be combined into a broader confusion analysis, while others claim the low-bar threshold should at least be reserved for use with traditional expressive works.

Mark discounted the idea of a narrow, low-impact ruling, saying “they simply can’t punt this.”

The high court’s agreed to hear the Jack Daniel’s case three weeks after it agreed to hear about the Abitron Austria GmbH et al. v. Hetronic Int’l Inc case. Abitron appealed a $90 million profit award obtained almost entirely from sales outside of the US, claiming the territorial nature of US trademark law prohibits the outcome. This ruling prompted questions about the foreign reach of US trademark law.

Mark noted that the Federal Circuit Bar Association also weighed in, and—without taking sides—implored the court to consider potential impacts of its ruling on patent law. He added that the case [is] “fascinating,” and noted the increasingly global economy and the five or six different tests courts use to weigh extraterritorial application of the Lanham Act.

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