- by theguardian
- 21 Sep 2023
The Supreme Court on Thursday sided with Jack Daniel's in a dispute over a poop-themed dog toy that parodies its iconic liquor bottle, ruling that a lower court erred when it said the toy was covered by the First Amendment's free speech protections.
The unanimous opinion written by Justice Elena Kagan allows the liquor maker to revive its trademark lawsuit against VIP Products in lower courts. In the meantime, the "Bad Spaniels Silly Squeaker" toy remains on the market.
At the center of the case is the toy created by VIP Products that is strikingly similar to Jack Daniel's bottles. The distiller sued the company over the toy - which is replete with scatological humor - claiming it violated federal trademark law, which usually centers around how likely a consumer is to confuse an alleged infringement with something produced by the true owner of the mark.
Though the court's decision is a win for Jack Daniel's - which argued that an appeals court made a mistake when it said the toy was "non-commercial" and therefore enjoyed constitutional protection - the justices declined to grant the distiller's request to completely throw out the test an appeals court used when it ruled in favor of the toy, a move that would have given trademark holders wide latitude to sue companies that parody their marks on consumer goods.
"Today's opinion is narrow. We do not decide whether the Rogers test is ever appropriate, or how far the 'noncommercial use' exclusion goes," Kagan wrote, adding: "The use of a mark does not count as noncommercial just because it parodies, or otherwise comments on, another's products."
"We hold only 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. That kind of use falls within the heartland of trademark law, and does not receive special First Amendment protection," she said.
Thursday's decision was the second the court handed down this term in an intellectual property dispute. In May, the justices ruled against the late Andy Warhol, saying the artist infringed on a photographer's copyright when he created a series of silk screens based on a photograph of the late singer Prince.
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