Pryor Cashman Counsel William Thomashower, a member of the Intellectual Property Group, serves on the New York Intellectual Property Law Association's Amicus Brief Committee, which filed an amicus curiae brief in January 2023 to the U.S. Supreme Court in an important trademark case, Jack Daniel's Properties, Inc. v. VIP Products LLC.
On June 8, 2023, the Court decided the case (read Pryor Cashman's Client Alert and the opinion here), and NYIPLA posted comments on LinkedIn on June 13. The case focused on a trademark infringement and trademark dilution claim by Jack Daniel's against VIP Products, which had created a parody dog chew toy product called "Bad Spaniels" that used wording and trade dress similar to the Jack Daniel's Black Label whiskey bottle. Jack Daniel's challenged this as likely causing confusion and, although an attempt at humor, tarnishing its brand. Reversing a dismissal by the Ninth Circuit Court of Appeals, which had found the parody "humorous expression," the Supreme Court ruled in favor of Jack Daniel's by remanding the case for a determination under the likelihood of confusion standard.
In the NYIPLA brief, Bill and his co-authors argued (in favor of neither party) that the Supreme Court needed to clarify the standards for trademark infringement when a parody product had both commercial and expressive components. The Court's decision addressed that issue.
In the NYIPLA LinkedIn post following the SCOTUS decision, Bill provided a summary of the decision and noted that the Court addressed the point raised in the amicus brief.
Read the full NYIPLA amicus brief and the Supreme Court decision using the links below.
Resources
- [NYIPLA Amicus Brief] Jack Daniel's Properties, Inc. v. VIP Products LLC
- [U.S. Supreme Court] Jack Daniel's Properties, Inc. v. VIP Products LLC
- [Client Alert] Jack Daniels' SCOTUS Win for Brands: Product Names Are Not Shielded From Infringement Claims
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