AIPLA Files Amicus Brief in Jack Daniel’s Properties Inc. v. VIP Products LLC

Written January 20, 2023

Arlington, VA. January 18, 2023 - The American Intellectual Property Law Association (AIPLA) filed an amicus brief before the U.S. Supreme Court in Jack Daniel’s Properties Inc. v. VIP Products LLC (No. 22-148) supporting reversal and remand of the Ninth Circuit’s decision below.  The case involves VIP’s “humorous” use of trademarks and trade dress owned by Jack Daniel’s in connection with a dog toy product.  Jack Daniel’s claimed that the unauthorized use of its marks violates its rights under the Lanham Act.  However, the Ninth Circuit held that the First Amendment protects all “humorous” or parodic uses of others’ marks regardless of the nature of the underlying product, becoming the first court to apply such heightened protections outside of Lanham Act disputes involving “artistic” works.  The Supreme Court granted Jack Daniel’s petition for certiorari in November 2022, after AIPLA and several other amici had filed in support of the petition. 


AIPLA’s brief on the merits argues that the Ninth Circuit erred by discarding the Lanham Act’s statutory liability standards in favor of a heightened protection based on perceived First Amendment concerns.  The Act’s statutory provisions (in particular the commercial use and likelihood of confusion requirements for infringement liability) already provide an appropriate balance between trademark rights and free-speech interests in cases involving “humorous” utilitarian products, such as the dog toys at issue in this case.  While heightened protection based on the First Amendment may be appropriate in disputes involving the use of others’ marks in artistic works that independently qualify as protected speech, VIP’s use of Jack Daniel’s marks is commercial speech the Lanham Act may permissibly regulate. Accordingly, AIPLA urged the Court to reverse the decision below and remand the case for consideration of Jack Daniel’s trademark infringement and dilution claims under the applicable standards in the Lanham Act. AIPLA took no position on which party should ultimately prevail on the merits. 


AIPLA’s brief was authored by Bill Barber and Giulio Yaquinto of Pirkey Barber PLLC, and Lisa Tittemore and Katherine Soule of Sunstein LLP. 

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