June 2023

Jack Daniel’s Parody Case Ruling – What This Means For Brands


The Supreme Court recently issued its highly anticipated ruling in the Jack Daniel’s parody case.  A link to the full unanimous decision can be found here.


At issue was whether VIP Products’ dog toy that resembled a bottle of Jack Daniel’s whiskey, but with humorously altered words and graphics, was entitled to fair use protection under the First Amendment.  Jack Daniels argued the use of their famous bottle image and other recognizable trade dress components constituted trademark infringement and dilution of Jack Daniel’s famous trademarks.


The District Court ruled in favor of Jack Daniel’s, but the Ninth Circuit Court of Appeals reversed the decision, focusing on the supposed non-commercial use of the marks on dog toys as giving rise to an exemption from liability, regardless of whether they designated the source of the goods.

The Supreme Court disagreed.  In an opinion authored by Justice Kagan on behalf of a unanimous Court, the Supreme Court held that the noncommercial use exclusion does not shield parody, criticism, or commentary when a mark is used as a designation of source for the alleged diluter’s own goods.  In other words, if a parody uses a trademark to identify the source of its own products, it does not fall within the noncommercial use exclusion and can still be subject to liability for trademark dilution.

This decision narrows the scope of the noncommercial use exclusion, re-aligning the analysis with the fair use analysis under the Lanham Act, and giving brand owners more firepower to protect their IP rights from uses that walk the line between fair use and infringement/dilution.

The decision also clarifies that the Rogers test, used to protect First Amendment speech in trademark cases, does not apply when a trademark is used as a source identified. The case was remanded back to the District Court for further consideration in light of the Supreme Court’s clarification about the application of the noncommercial use and fair use exclusion analyses.

If you are a brand owner or a creative looking for more information about this case and other recent Intellectual Property cases, as well as the latest in legal updates in the world of artificial intelligence and privacy, join Zac Alinder, Ian Boyd, Michael Hewitt and Andrea Cristiani-Closa for a half-day of CLEs at the Intellectual Property and Internet Law Symposium, hosted by the BASF Barristers IP and Internet Law Section.  The symposium will take place on August 24, 2023 at BASF Headquarters, 201 Mission Street, 4th Floor, SF CA 94105.  Sign up here to attend.

Article written by Michael Hewitt. Michael Hewitt is an associate leader of the Blockchain and Digital Assets Practice Group. He is also a member in the Brand Integrity and Innovation Group, and the Litigation  and Appeals, and Intellectual Property groups.  Mr. Hewitt works with clients to protect their brand portfolio through unique and effective enforcement mechanisms.