On October 30, 2020, Meaghan Kent was quoted in Managing Intellectual Property on the possible impact of the Jack Daniel’s petition to the Supreme Court to determine whether a humorous commercial product should be subject to the same likelihood of confusion analysis as other products under the Lanham Act, and whether a commercial item’s humor should render it noncommercial and bar a claim of dilution by tarnishment.
The case began when Jack Daniel’s sent VIP Products a cease and desist letter accusing it of infringing its trademarks and trade dress in VIP’s "Bad Spaniels" dog toys. VIP sought a declaratory judgment from the District Court for the District of Arizona that its toy did not infringe, which the court did not grant. But in March 2020, the Court of Appeals for the Ninth Circuit argued that the dog toys were expressive works entitled to First Amendment protection and that the district court should have required Jack Daniel’s to meet at least one of the two prongs of the Rogers test.
According to the article, if the Supreme Court denies certiorari, companies may have more motivation to forum shop. If the Supreme Court accepts the petition and rules in defendant VIP Products’ favor, businesses and individuals could have even more freedom to infringe. However, free speech advocates worry that a win for Jack Daniel’s could set a dangerous precedent and weaken the position of individual defendants that receive cease and desist letters from large corporations.
Kent says that though she doesn’t agree with the Ninth Circuit’s decision, certainty is better than a circuit split. She adds that it’s easier to advise clients and for clients to know how to apply the law when there is clarity.