Barking Up the Legal Tree: Company Sued Over Squeaky Dog Toy
In a significant trademark decision, the Ninth Circuit Court in VIP Products LLC v. Jack Daniel’s Properties, Inc. reaffirmed the boundaries of parody within trademark law. The case, which centers on VIP Products’ parody dog toy mimicking Jack Daniel’s whiskey bottle, sheds light on the tension between brand protection and First Amendment rights.
Background of the Case
VIP Products, a company known for its often crudely humorous dog toys resembling famous liquor brands, produced a squeaky toy modeled after Jack Daniel’s whiskey bottle. The toy featured imagery like Jack Daniel’s’ trademark as well as text referencing “POO”, “the Old No 2” and “100% SMELLY.” VIP claimed their use of the famous brand on their toy was a parody protected by the First Amendment. Jack Daniel’s, however, argued that the squeaky toy diluted and infringed upon its famous trademark, misleading consumers and tarnishing its brand reputation.
The legal battle began around 2014 and eventually reached the U.S. Supreme Court in Jack Daniel’s Properties, Inc. v. VIP Products LLC (2023), which rejected VIP’s argument that the Rogers test, a standard that protects expressive works from trademark claims, applied to the case. Instead, the Court determined that when a trademark is used as a source identifier, traditional likelihood-of-confusion analysis under the Lanham Act is appropriate. The Court stated that “it is not appropriate 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.”
Photoy by Taylor Sondgeroth
The Ninth Circuit’s Ruling
Following the Supreme Court’s guidance, the Ninth Circuit applied the standard likelihood-of-confusion test to determine whether consumers might mistake VIP’s product as being affiliated with or endorsed by Jack Daniel’s. The court considered several factors, including:
Similarity of the Marks: The parody toy closely resembled Jack Daniel’s distinctive trade dress.
Consumer Perception: Evidence suggested that some consumers could associate the toy with the whiskey brand.
Commercial Nature of the Use: The court found that VIP’s toy was a commercial product rather than pure expressive speech.
Based on these and other factors, the court ruled in favor of Jack Daniel’s, holding that VIP’s product constituted trademark infringement and was not protected as non-commercial speech.
Implications for Trademark Law and Parody
This decision has significant implications for brand owners, parody creators, and businesses navigating trademark law. Key takeaways include:
Parody Faces Limits in Commercial Settings: While parody is a recognized form of expression, using another company’s trademark in a commercial product—especially when the product mimics the original’s trade dress—can lead to infringement liability.
Consumer Confusion Remains the Standard: Courts will focus on whether consumers are likely to be confused about the source or sponsorship of a product, rather than solely on whether the product intends to be humorous.
Trademark Owners Have Strengthened Rights: These ruling bolsters brand owners’ ability to prevent unauthorized commercial use of their trademarks, reinforcing the importance of trademark protection strategies.
The Takeaway
The Ninth Circuit’s decision in VIP Products v. Jack Daniel’s underscores the delicate balance between free expression and trademark enforcement. Businesses seeking to create parody-based products must carefully evaluate the potential for consumer confusion and the commercial nature of their use. Meanwhile, trademark holders can take this ruling as a strong affirmation of their rights in protecting brand identity against potentially infringing products.
As courts continue to clarify the boundaries of parody in trademark law, companies should remain vigilant in their intellectual property strategies to navigate this evolving legal landscape effectively.
