{"id":198,"date":"2023-01-18T12:31:47","date_gmt":"2023-01-18T16:31:47","guid":{"rendered":"https:\/\/blogs.duanemorris.com\/fashionretailbrandedconsumergoods\/?p=198"},"modified":"2023-01-18T12:31:47","modified_gmt":"2023-01-18T16:31:47","slug":"taking-a-bite-out-of-the-brand","status":"publish","type":"post","link":"https:\/\/blogs.duanemorris.com\/fashionretailbrandedconsumergoods\/2023\/01\/18\/taking-a-bite-out-of-the-brand\/","title":{"rendered":"Taking a Bite Out of the Brand?"},"content":{"rendered":"

By Brian Siff<\/a> and Victoria Danta<\/a><\/strong><\/em><\/p>\n

Is imitation the sincerest form of flattery? Not according to brand owner Jack Daniel\u2019s Properties, Inc., (\u201cJDPI\u201d), which owns the JACK DANIEL\u2019S source identifiers for alcoholic beverages and other goods \u2013 most notably, whiskey.<\/p>\n

For the better part of a decade, JDPI has been embroiled in a dispute with toy maker VIP Products LLC, (\u201cVIP\u201d), which makes humorous chew toys that allegedly parody well-known products. The toy shown below is at the center of this dispute, <\/i><\/b>and features elements of authentic Jack Daniel\u2019s\u00ae whiskey bottles and labeling, and dog-related puns, such as \u201cBAD SPANIEL,\u201d \u201cOLD No. 2,\u201d and \u201cTENNESSEE CARPET\u201d:<\/p>\n

 <\/p>\n\n\n\n\n
\n

VIP Chew Toy<\/strong><\/p>\n<\/td>\n

\n

JDPI Bottle and Labeling<\/strong><\/p>\n<\/td>\n<\/tr>\n

\"\"<\/a><\/td>\n\"\"<\/a><\/td>\n<\/tr>\n<\/tbody>\n<\/table>\n

In 2014, JDPI <\/i><\/b>accused VIP of trademark infringement and <\/i><\/b>demanded that VIP cease all sales of the BAD SPANIELS chew toy. VIP then sued for a declaratory judgment, including a declaration of non-infringement. JDPI counterclaimed for infringement and related causes of action, including dilution of a famous trademark. The U.S. District Court <\/i><\/b>for the District of Arizona applied a traditional \u201clikelihood of confusion\u201d analysis to JDPI\u2019s claims, finding <\/i><\/b>that confusion was likely on the basis of evidence that included actual confusion and a consumer survey. Notably, JDPI\u2019s brand licensing program included pet products.<\/p>\n

The District Court allegedly erred by not appropriately considering the First Amendment\u2019s free speech protections and specifically, it did not properly consider the idea that the chew toy was a humorous parody, and that it was an expressive work entitled to protection.<\/p>\n

In early-2020, the U.S. Court of Appeals for the Ninth Circuit ruled that the toy was, indeed, an expressive work protected by the First Amendment. Thus, VIP\u2019s use of JDPI\u2019s source identifiers was not actionable infringement, dilution or tarnishment. The Ninth Circuit held that the traditional likelihood of confusion test failed to account for the public interest when free speech rights are involved. The Ninth Circuit emphasized the toy\u2019s humorous messages. Ultimately, the Ninth Circuit sent the dispute back to the District Court for further proceedings on JDPI\u2019s infringement claims. Critics point out that the Ninth Circuit was the first anywhere to apply such strong free-speech protections, and that the holding conflicts with decisions from other Courts of Appeals (including the Second Circuit). Furthermore, some argue, the Ninth Circuit\u2019s decision could encourage trademark infringement, by appearing to offer infringers protection if they can allege some minimal \u201chumorous\u201d aspect to their product.<\/p>\n

When the dispute then returned to the District Court, the Court ruled for VIP, finding that the chew toy did not<\/i> infringe upon JDPI\u2019s rights, and that it was creative expression was protected by the First Amendment. However, the District Court encouraged the parties to appeal to the SCOTUS, as it believed the Ninth Circuit\u2019s decision would create significant uncertainty.<\/p>\n

Initially, SCOTUS rejected JDPI\u2019s Petition for Certiorari, but JDPI was persistent; with the further urging of the District Court, JDPI repetitioned SCOTUS, and SCOTUS agreed to hear the appeal in late-November 2022.<\/p>\n

The issues SCOTUS will resolve are as follows:<\/p>\n

1) \u201cWhether humorous use of another\u2019s trademark as one\u2019s own on a commercial product is subject to the Lanham Act\u2019s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims.\u201d; and<\/p>\n

(2) \u201cWhether humorous use of another\u2019s mark as one\u2019s own on a commercial product is \u2018noncommercial\u2019 under 15 U.S.C. \u00a71125(c)(3)(C), thus barring as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act.\u201d<\/p>\n

Various third parties have filed amicus briefs on the issue, including the American Intellectual Property Law Association, (AIPLA); Campbell Soup Company; Levi Strauss & Co. and Patagonia Inc.; and the International Trademark Association, (INTA).<\/p>\n","protected":false},"excerpt":{"rendered":"

By Brian Siff and Victoria Danta Is imitation the sincerest form of flattery? Not according to brand owner Jack Daniel\u2019s Properties, Inc., (\u201cJDPI\u201d), which owns the JACK DANIEL\u2019S source identifiers for alcoholic beverages and other goods \u2013 most notably, whiskey. For the better part of a decade, JDPI has been embroiled in a dispute with … <\/p>\n

Continue reading “Taking a Bite Out of the Brand?”<\/span><\/a><\/p>\n","protected":false},"author":6,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[2],"tags":[182,183,185,181,21,184],"ppma_author":[79],"class_list":["post-198","post","type-post","status-publish","format-standard","hentry","category-general","tag-bad-spaniels","tag-chew-toy","tag-infringement","tag-jack-daniels","tag-trademark","tag-trademark-infringement"],"authors":[{"term_id":79,"user_id":6,"is_guest":0,"slug":"duanemorris3","display_name":"Duane Morris","avatar_url":"https:\/\/secure.gravatar.com\/avatar\/843ff6e7a8fe5fc92109b47a45f34b6cf0ea499e6e788db23456c838b0ae6747?s=96&d=blank&r=g","0":null,"1":"","2":"","3":"","4":"","5":"","6":"","7":"","8":""}],"_links":{"self":[{"href":"https:\/\/blogs.duanemorris.com\/fashionretailbrandedconsumergoods\/wp-json\/wp\/v2\/posts\/198","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/blogs.duanemorris.com\/fashionretailbrandedconsumergoods\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/blogs.duanemorris.com\/fashionretailbrandedconsumergoods\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/blogs.duanemorris.com\/fashionretailbrandedconsumergoods\/wp-json\/wp\/v2\/users\/6"}],"replies":[{"embeddable":true,"href":"https:\/\/blogs.duanemorris.com\/fashionretailbrandedconsumergoods\/wp-json\/wp\/v2\/comments?post=198"}],"version-history":[{"count":0,"href":"https:\/\/blogs.duanemorris.com\/fashionretailbrandedconsumergoods\/wp-json\/wp\/v2\/posts\/198\/revisions"}],"wp:attachment":[{"href":"https:\/\/blogs.duanemorris.com\/fashionretailbrandedconsumergoods\/wp-json\/wp\/v2\/media?parent=198"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/blogs.duanemorris.com\/fashionretailbrandedconsumergoods\/wp-json\/wp\/v2\/categories?post=198"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/blogs.duanemorris.com\/fashionretailbrandedconsumergoods\/wp-json\/wp\/v2\/tags?post=198"},{"taxonomy":"author","embeddable":true,"href":"https:\/\/blogs.duanemorris.com\/fashionretailbrandedconsumergoods\/wp-json\/wp\/v2\/ppma_author?post=198"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}