Will the Supreme Court Let Jack Daniel’s Go to the Dogs?

Wednesday’s oral arguments at the Supreme Court had it all: dog toys, Jack Daniel’s whiskey, the 1978 pornographic film Debbie Does Dallas, the First Amendment, and more. Despite its eclectic array of—let’s say unusual—subject matter, how the justices decide this thorny matter could have interesting implications at the intersection of free speech protections and trademark law.

The case, Jack Daniel’s Properties, Inc. v. VIP Products LLC, is ostensibly about dog toys manufactured by the latter company that parody a variety of alcoholic spirits, including the plaintiff’s iconic spirit. The “Bad Spaniels” toy strongly resembles a Jack Daniel’s whiskey bottle, but with scatological references: Instead of “Old No. 7,” it says “Old No. 2,” and the “Tennessee Sour Mash Whiskey” label is changed to “On Your Tennessee Carpet.” (Humor, I’ll remind you, is subjective.)

Jack Daniel’s sued the toymaker for violating its trademark in federal court, arguing that it had violated the Lanham Act, the nation’s central federal trademark law. The Lanham Act protects registered trademarks from dilution, infringement, and other violations, all of which the distillery attributed to the toymaker. VIP Products countered that its products were protected by the First Amendment since they were a parody of Jack Daniel’s well-known product and not intended or marketed as an actual competitor to them.

The Ninth Circuit Court of Appeals rejected Jack Daniel’s claim by relying on what’s known as the Rogers test, a trademark-infringement test that’s typically used for “expressive” creative works. It concluded that the Bad Spaniels toy’s humorous and parodic message made it eligible for heightened protection from Lanham Act claims under the First Amendment. The distillery appealed that ruling to the Supreme Court and argued that it had unfairly deviated from the Lanham Act’s usual “likelihood-of-confusion” test.

“Under Rogers, an expressive work is allowed to confuse as long as the use of a mark is artistically relevant and not explicitly misleading,” Lisa Blatt, who argued before the court for Jack Daniel’s, told the justices. “But the Lanham Act has no exceptions for expressive works. It bars using marks for any goods when likely to cause confusion as to origin, sponsorship, or approval. Artistic relevance has nothing to do with confusion, and both implicit and explicit uses can confuse.”

Bennett Cooper, who argued on behalf of VIP Products, defended the Rogers test as the proper balancing act between trademark protections and First Amendment protections. “The circuits developed the Rogers test to protect expressive works generally,” he told the justices. “And it keeps the threat of extended litigation from silencing speech. That’s particularly true when well-heeled celebrities go after parodists.”

Justice Samuel Alito told Blatt that he was “concerned” about her dismissal of Rogers on First Amendment grounds and said her exchange with Sotomayor suggested there were “serious constitutional issues” with her position. Blatt tried to defend her argument by noting that trademarks protect a property right. “Well, allow me to push back with the founding,” she explained. “Trademarks have been around since the 1500s. They predated the First Amendment.”

The justices were also skeptical of VIP Products’ arguments. “Well, what is there to it? What is the parody here?” Kagan asked. “The parody?” Cooper replied. “Yeah, because maybe I just have no sense of humor, but what’s the parody?” Kagan repeated, to chuckles from others in the court. Cooper responded that the toys make fun of companies that “take themselves too seriously.”

“Well, I mean, you say that, but you know, you make fun of a lot of marks: Doggie Walker, Dos Perros, Smella R. Paw, Canine Cola, Mountain Drool. Are all of these companies taking themselves too seriously?” Kagan asked.

“I think there are a lot of products that take them too seriously,” Cooper claimed. “You don’t see, for example, something near and dear to my heart, a parody of Woodford Reserve bourbon because you don’t get that building up of an edifice of making them into a cultural icon and reference point.”

Blatt, for her part, noted that not all self-proclaimed parodies are so mild or well intentioned. She pointed to Debbie Does Dallas, which was the subject of a Lanham Act case brought by the Dallas Cowboys cheerleaders when it was released. “The other side wants to talk about the uses they like,” she told the justices, referring to VIP Products. “They don’t want to talk about the pornographic and poisonous things that could be done when you infringe someone’s trademark.”

Justice Clarence Thomas appeared skeptical of the Rogers test’s viability, questioning Cooper at one point whether he could point to a “textual hook” in the Lanham Act to base the test upon. He also noted that the test “doesn’t seem to have its roots in First Amendment jurisprudence.” Cooper conceded that, as originally formulated, “it’s not the most well-phrased test in terms of artistic relevance,” but also pointed out that parodies were an “easy case” under it because they inherently distinguish themselves from the original material.

At the same time, some of the justices expressed reservations about scrapping the Rogers test if the Lanham Act itself would bring First Amendment concerns. “I have some hesitation doing away with the Rogers test because without knowing that the likelihood-of-confusion test is sufficiently flexible itself,” Justice Sonia Sotomayor told Blatt. “These tests have to be because the statute talks about likelihood-of-confusion, and what judges have to do is figure out how we decide whether it’s confused. So we’ve got to create some principles.”

Others appeared dubious toward the Jack Daniel’s case on more basic grounds. “Could any reasonable person think that Jack Daniel’s had approved this use of the mark?” Alito asked Blatt at one point. “Absolutely, that’s why we won below,” she replied. “Really?” he responded, apparently unconvinced.

He offered a hypothetical scenario in which a Jack Daniel’s employee, not a VIP Products employee, had come up with the exact same dog toy idea and pitched it to the distillery’s leadership. “Do you think the CEO is going to say that’s a great idea, we’re going to produce that thing?” Alito asked. Blatt responded that companies make ill-advised decisions all the time, pointing to an infamous Super Bowl ad by Nationwide Insurance that featured a dead child.

Blatt also noted that Alito—and any other federal judge, by extension—wasn’t exactly the average American consumer. “Justice Alito, I don’t know how old you are, but you went to law school, you’re very smart, you’re analytical, you have hindsight bias,” she began, before Alito cut her off. “Well, I went to a law school where I didn’t learn any law,” he replied to laughter in the courtroom.

Observers are left similarly unlearned about how the case might be decided. Two of the court’s members, Justices Brett Kavanaugh and Amy Coney Barrett, did not ask any questions during the argument session, and most of the justices who did asked tough questions for both sides. A ruling in favor of Jack Daniel’s could make it easier for companies to win trademark infringement cases when the target is a parody of its product.

A win for VIP Products, on the other hand, could strengthen First Amendment protections when it comes to satirical products in the marketplace. At the same time, it would make it more difficult for companies to protect their brands from perceived infringement. A final decision is expected by the end of June.