Law.com Subscribers SAVE 30%
Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.
Post-SCOTUS District Court Ruling In Jack Daniel’s v. VIP Products Reshapes Trademark Dilution Jurisprudence
Background and Supreme Court Decision
As previously reported, in Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023), the U.S. Supreme Court clarified a crucial boundary in trademark law: when an allegedly infringing product uses a mark “as a mark,” i.e., as a source identifier, First Amendment defenses under the Rogers v. Grimaldi test do not apply. This 2023 decision reversed the Ninth Circuit’s earlier holding and remanded the case for further proceedings on both trademark infringement and dilution by tarnishment claims under the Lanham Act.
Key Holding: Rogers Test Inapplicable Where Use Is Source-Identifying
The Supreme Court concluded that VIP Products’ “Bad Spaniels” dog toy — designed to mimic the Jack Daniel’s whiskey bottle — used the Jack Daniel’s trade dress as a trademark, thereby warranting a traditional likelihood of confusion and dilution by tarnishment analysis. The parody defense was not precluded entirely but was to be considered within the conventional trademark infringement framework.
This premium content is locked for Entertainment Law & Finance subscribers only
ENJOY UNLIMITED ACCESS TO THE SINGLE SOURCE OF OBJECTIVE LEGAL ANALYSIS, PRACTICAL INSIGHTS, AND NEWS IN ENTERTAINMENT LAW.
- Stay current on the latest information, rulings, regulations, and trends
- Includes practical, must-have information on copyrights, royalties, AI, and more
- Tap into expert guidance from top entertainment lawyers and experts
Already a have an account? Sign In Now Log In Now
For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473
New York's Latest Cybersecurity Commitment
On Aug. 9, 2023, Gov. Kathy Hochul introduced New York's inaugural comprehensive cybersecurity strategy. In sum, the plan aims to update government networks, bolster county-level digital defenses, and regulate critical infrastructure.
Law Firms are Reducing Redundant Real Estate by Bringing Support Services Back to the Office
A trend analysis of the benefits and challenges of bringing back administrative, word processing and billing services to law offices.
Bit Parts
Summary Judgment Denied Defendant in Declaratory Action by Producer of To Kill a Mockingbird Broadway Play Seeking Amateur Theatrical Rights
How AI Has Affected PR
When we consider how the use of AI affects legal PR and communications, we have to look at it as an industrywide global phenomenon. A recent online conference provided an overview of the latest AI trends in public relations, and specifically, the impact of AI on communications. Here are some of the key points and takeaways from several of the speakers, who provided current best practices, tips, concerns and case studies.