The Supreme Court, with Justice Kagan writing for the unanimous Court, issued its decision in Jack Daniel's v. VIP Products today, and VIP is likely barking mad. The dispute revolved around a squeaky, chewable dog toy made to look like a bottle of Jack Daniel's whiskey, but with the name "Bad Spaniels" rather than Jack Daniel's printed on it. The toy also contained the phrase "The Old No. 2 on your Tennessee Carpet" rather than the Jack Daniel's phrase "Old No. 7 Brand Tennessee Sour Mash Whiskey." Jack Daniel's sued for both trademark infringement (due to the similarity between the trade dresses) and dilution by tarnishment (due to potential association between Jack Daniel's and feces).
The Ninth Circuit had held for VIP Products on both counts, and the Supreme Court vacated the decision based on its disagreement on both of these counts. On the trademark infringement, meaning likelihood of confusion, claim the Supreme Court disagreed with the notion that Jack Daniel's had to make it past "any threshold First Amendment filter" (including the so-called Rogers v. Grimaldi threshold test) just because the work contained expressive content. The Court stated that no such threshold inquiries could apply "when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer's own goods."
The Court distinguished the case at bar from cases employing a First Amendment filter where a term was used in the title of a movie such as "Ginger and Fred" (where the Rogers test originated) or that of a song such as "Barbie Girl" (Mattel, Inc. v. MCA Records, Inc.). Justice Kagan emphasized that Rogers "has always been a cabined doctrine" but "has no proper role" when use as a source identifier is in play. Noting that many trademarks contain expressive content
