Jack Daniel’s Properties Inc. v. VIP Products LLC, No. 22-148, Amicus Brief filed 9/16/22 September 29, 2022

Arlington, VA. September 16, 2022,- The American Intellectual Property Law Association (AIPLA) filed an amicus brief in support of the Petition for Certiorari currently pending before the Supreme Court in Jack Daniel’s Properties Inc. v. VIP Products LLC, No. 22-148.  The decision below, decided by the Ninth Circuit, involved the unauthorized use of trademarks and trade dress owned by Jack Daniel’s in connection with a dog toy product that purportedly parodied the Jack Daniel’s brand.  Jack Daniel’s claimed that the dog toys infringed its rights under the Lanham Act.  However, the Ninth Circuit held that the First Amendment protects all “humorous” or parodic uses of others’ trademarks regardless of the nature of the underlying product, becoming the first court to apply such protections outside of Lanham Act disputes involving artistic works.

The Ninth Circuit’s holding conflicts directly with decisions from other Courts of Appeals, including the Second Circuit, and creates a clear circuit split.  Further, if allowed to stand, the Ninth Circuit’s decision could have significant ramifications for trademark litigants. The Ninth Circuit’s decision below signals that alleged infringers selling any kind of utilitarian product for a commercial purpose may now escape trademark liability, provided they allege some minimal “humorous” aspect.  The Ninth Circuit’s expansion of First Amendment protection previously applicable only to artistic works improperly and potentially dangerously curtails trademark owners’ ability to enforce their marks and protect against likelihood of consumer confusion in the marketplace.  AIPLA therefore supports the Petition seeking further review from the Supreme Court in this case.

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