“VIP fails to explain why its message is more valuable than Jack Daniel’s message, Jack Daniel’s goodwill, or the public’s interest in not being misunderstood.” – Jack Daniel’s reply brief
On Friday, March 10, Jack Daniel’s Properties, Inc. filed a response to the United States Supreme Court in a major trademark lawsuit due March 22.
A court ruled that poop-themed dog toys that mimic Jack Daniels whiskey bottles were granted First Amendment protection.
In November 2022, the Supreme Court granted Jack Daniel’s appeal and filed a ruling. This is intended to clarify whether the First Amendment protects VIP Products, LLC’s humorous use of the Jack Daniel’s trademark for commercial purposes against claims of infringement and dilution.
The Appellate Court previously dismissed Jack Daniel’s petition in January 2021, and the U.S. Court of Appeals for the Ninth Circuit “briefly affirmed” the district court’s summary judgment judgment against VIP on remand. In its 2020 ruling, the Ninth Circuit ruled that VIP’s dog toy imitating a Jack Daniel’s whiskey bottle was an expressive work eligible for First Amendment protection, and found that the toy was Remanded the case back to the United States, overturning the district court’s initial ruling that it infringed and weakened the Jack Daniel’s trademark. District Court for Determination on the Merits of Infringement Claims. According to Jack Daniel’s, the district court then “reluctantly granted summary judgment” against VIP Products, which the Ninth Circuit upheld in summary, after which Jack Daniels filed his second SCOTUS petition. Did.
The Amici majority reviewed so far has asked the court to reverse the Ninth Circuit’s ruling and limit its application. Rogers v. Grimaldi case It seeks to balance free speech with trademark rights to create a work that is decidedly artistic.
However, in a response filed in October 2022, VIP accused Jack Daniels of “waging war” and “criticized major American whiskey distilleries for their lack of sense of humor. , it’s ironic that we don’t recognize when that is—enough already.
Jack Daniel’s Reply
In a March 10 filing, Jack Daniels told the court, “The affirmation circumvents Congress’ meticulous protection of trademarks and allows beneficiaries to misuse them to create their own brands.” “Without serious customer confusion or false association with incompatible brands.” No one disputes that VIP’s product is trying to be funny, but “alcohol Toys don’t mix well, nor do drinks and excrement. “
Jack Daniels claims: Rogers It also notes that the circuit courts are divided on whether or not to adopt it, and if so, how to apply it.Brief dismissed VIP claims Rogers Should apply when a consumer purchases a product that contains an “artistic expression” in a “fictitious product”. This contrasts with “non-parody merchandise”, which uses “pun-based trademarks” to explain that “bad spaniel” toys are not trademarked for “pretend play”. Rather, Jack Daniel’s says, “This is a real dog toy, sold by a real company in a real store, and used by real dogs.”
Ninth Circuit Application Rogers The tests range from humorous toys to anything that conveys ideas or expresses a point of view, including those that express messages of “empathy, romance, dystopia, erotica, etc.” Further, some argue that the test is open-ended with respect to the medium of expression and that Rogers should be applied only to the titles of books and films, and not to their content. Some have suggested that it applies to the content of
moreover, Rogers actually cause problems.[ing] Both are expressive, but the infringer’s speech is better than the trademark owner’s speech,” says Jack Daniel. “VIP fails to explain why its message is more valuable than Jack Daniel’s message, Jack Daniel’s goodwill, or the public’s interest in not being misunderstood.” A quick note that parody doesn’t need confusion, like Campbell vs. Acuff-Rose Music, Inc., Group 2 Live Crew’s version of Roy Orbison’s famous song, pretty womanwas seen as a parody use of the original work that did not confuse the listener.
Brief also rejected VIP’s attempt to “rehearsal” the district court’s factual findings of possible confusion, stating that the Ninth Circuit and VIP’s interpretation of the dilution law was erroneous. I’m here. Noncommercial use does not extend to use of the mark to market products, Brief said, and the First Amendment does not support: Rogers.
A number of VIP-supporting Amici submitted briefs in late February, including the Electronic Frontier Foundation, Rogers The test is wrong… Trademarks are ubiquitous in the modern world, and the same attributes that help identify the origin of goods and services also make them powerful expressive tools to comment on their owners and society. “
On March 9, VIP also filed a motion seeking permission to submit 10 Silly Squeakers “Bad Spaniel” dog toys to help the court understand the nature of the toys. On March 6, the court granted the US Attorney General’s request to join oral argument, but denied Motion Pictures of America’s motion.
