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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.
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