The United States Supreme Court has denied Jack Daniel’s distillery’s petition for a writ of certiorari from a Ninth Circuit decision holding that a dog toy seller’s use of the Jack Daniel’s trademarks and label design is expression protected by the First Amendment.

VIP Products had released a dog toy that resembled the well-known Jack Daniel’s bottle, changing the wording of the familiar label to include blunt jokes and word-plays on the messier aspects of having a dog in the house. Jack Daniel’s demanded that VIP cease all further sales of the toy. VIP filed suit seeking a declaration of non-infringement, of non-dilution, and that Jack Daniels was not entitled to trademark protection for its trade dress and bottle design. Jack Daniel’s counterclaimed, alleging trademark infringement and dilution by tarnishment. The district court agreed with Jack Daniel’s, rejecting VIP’s nominative fair use and First Amendment defenses. The court found trademark infringement and dilution by tarnishment, enjoining any future sales of the dog toy.

On appeal, the Ninth Circuit reversed, holding that the dog toy should have been analyzed as an “expressive work.” The Ninth Circuit’s analysis relied on the similar case of Louis Vuitton v. Haute Diggity Dog (507 F.3d 252, 4th Cir. 2007) in which the Fourth Circuit addressed a fashion company’s claim against the maker of a chew-toy for dogs marketed as “Chewy Vuitton” and bearing the designer’s familiar LV logo pattern. The Fourth Circuit held that the fact that the dog toy was a commercial product meant only that the dog toy was not automatically exempt from a dilution lawsuit under the federal Trademark Dilution Revision Act, 15 U.S.C. 1125(c), not that it could not still qualify for First Amendment protection. The court went on to find a satirical purpose in the dog toy that weighed more heavily than the fact that it was a commercial product and not a traditional medium of comment such as books, articles, artwork, and other so-called expressive works.

Following the Fourth Circuit’s lead, the Ninth Circuit found that VIP’s toy also qualified for First Amendment protection as an “expressive work” and that the trial court had erred in not regarding the toy as an expressive work. Once a work is regarded as “expressive”, its use of the name, image, or trademark of another party is examined under the Rogers v. Grimaldi test, which asks whether (1) such use is inherently related to the work, and (2) the work is explicitly misleading as to the complaining party’s involvement in the work. The “explicitly misleading” factor is hard to overcome, so most applications of the Rogers test end in a victory for the First Amendment. So, in the absence of anything explicitly misleading, the Ninth Circuit concluded that the toy seller’s use of the Jack Daniel’s trademarks is protected by the First Amendment. VIP Products, LLC v. Jack Daniel’s Properties, Inc., 953 F.3d 1170 (9th Cir. 2020).

Jack Daniel’s appealed to the U.S. Supreme Court, which appeal was supported by numerous brand owners and trademark authorities, raising concerns that if virtually anything, even a commercial product, can be regarded as an “expressive work”, the protections and purposes of trademark law will be eviscerated.

In denying certiorari, the Supreme Court lets the Ninth Circuit’s troubling decision stand.