Supreme Court Limits Expression-Based Defenses To Trademark Claims

On June 7, 2023, the U.S. Supreme Court issued its decision in Jack Daniel's Properties v. VIP Products, reversing the Ninth Circuit and holding in favor of the owner of the Jack Daniel's whiskey brand. In a unanimous decision, the Court rejected VIP's argument that its squeaky, chewable Bad Spaniels dog toy was an expressive work warranting stricter scrutiny under the First Amendment. The Court also rejected the argument that a trademark defendant escapes a dilution claim simply because the subject of the claim is a parody.

The decision, read together with the Court's recent copyright opinion in Andy Warhol Foundation for the Visual Arts v. Goldsmith, suggests an approach to copyright and trademark cases focused on the functional use being made, rather than on the claimed expressive meaning or message. And the decisions are alike in their relatively limited scope and the important questions left unanswered.