On January 18, 2023, the NAM filed an amicus brief urging the U.S. Supreme Court to reverse the 9th Circuit’s holding that VIP Products LLC’’s “Bad Spaniels Silly Squeaker” dog toy—which is the shape of a Jack Daniel’s bottle and contains a label that resembles the label on Jack Daniel’s Old No. 7 Black Label Tennessee Whiskey with dog-related humorous alterations—is an expressive work entitled to First Amendment protection from the trademark infringement and dilution claims asserted by Jack Daniel’s under the Lanham Act. In this case, the 9th Circuit reversed the lower court’s judgment entered in Jack Daniel’s favor, holding that the Lanham Act’s protections for trademarks only apply to expressive works if a plaintiff shows that a defendant’s use of the “mark is either (1) ‘not artistically relevant to the underlying work’ or (2) ‘explicitly misleads consumers as to the source of content of the work.’” According to the 9th Circuit, the district court erred in not considering whether Jack Daniel’s satisfied at least one of these prongs. The 9th Circuit further discounted Jack Daniel’s dilution by tarnishment claim, holding that VIP’s use of Jack Daniel’s mark was noncommercial because it was used to convey a humorous message protected by the First Amendment. On remand, the district court granted VIP’s motion for summary judgment, a decision the 9th Circuit affirmed on appeal.
We argued in our amicus brief that the First Amendment does not apply to protect speech that confuses or misleads consumers of products, and that the Court should reject the 9th Circuit’s holding that any “humorous” use automatically qualifies as “noncommercial,” and is therefore immune from trademark dilution claims. As trademark owners who have devoted substantial resources to building and protecting the goodwill and reputation associated with their products and trademarks, manufacturers have a strong interest in ensuring robust federal protections for those marks.
Happily, on June 8, 2023, the Court reversed the 9th Circuit's decision.