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Trademark Infringement and Freedom of Expression

A recent decision of the Supreme Court of the United States has considered the balance between the rights of a trademark owner and the freedom of expression of the infringer. Jack Daniel’s Properties, Inc., Petitioner V. Vip Products Llc (2023), No. 22–148.

The Facts

VIP Products LLC makes a squeaky, chewable dog toy designed to look like a bottle of Jack Daniel’s whiskey. Though not entirely. On the toy, for example, the words “Jack Daniel’s” become “Bad Spaniels” and the descriptive phrase “Old No. 7 Brand Tennessee Sour Mash Whiskey” turns into “The Old No. 2 On Your Tennessee Carpet.”

These and other jokes did not impress Jack Daniel’s Properties, Inc. who owns trademarks relating to the distinctive Jack Daniel’s bottle and many of the words and graphics on its bottle. Jack Daniel’s asserted that Vip Products LLC was infringing the trademarks associated with its famed whisky.

The Trial

VIP Products LLC brought an action in the District Court for a declaration that it had not infringed based on the US First Amendment asserting the Bad Spaniels toy was an expressive work.

The District court rejected both contentions for a common reason: because VIP had used the cribbed Jack Daniel’s features as trademarks—that is, to identify the source of its own products. The Court also found, based largely on survey evidence, that consumers were likely to be confused about the source of the Bad Spaniels toy. The court also said the toy, by creating “negative associations” with “canine excrement,” would cause Jack Daniel’s “reputational harm.”

The Ninth Circuit

The Court of Appeals for the Ninth Circuit reversed, ruling that the District Court had gotten the pretrial legal issues wrong. In the Court’s view, Bad Spaniels was an “expressive work”: Although a dog toy, and “surely not the equivalent of the Mona Lisa,” it “communicates a humorous message.”

The Supreme Court of the United States

The appeal was allowed. The Court said that the approach of the Ninth Circuit was not appropriate when the accused infringer has used a trademark to designate the source of its own goods—in other words, has used a trademark as a trademark. This use falls within the heartland of trademark law and does not receive special First Amendment protection.

The decision is relatively narrow and will not apply to works that use third party trademarks if the work is considered ”artistically expressive” and does not “explicitly mislead” consumers.

The Canadian Position

The Canadian Charter of Rights guarantees the right of freedom of expression. This freedom is essential but subject to reasonable limits prescribed by law as can demonstrably be justified in a free and democratic society.

When the grant of an injunction or other equitable relief would negatively affect the Charter right to freedom of expression, the potential for harm to that right must be considered as a part of determining the parties’ rights. The Charter right to freedom of expression is not absolute, but because of the importance of the guarantee of free expression any attempt to restrict the right must be subjected to scrutiny.

It seems likely that a Canadian Court would reach a similar result.

If you have questions, please contact me at

Goldman Sloan Nash & Haber LLP

480 University Avenue, Suite 1600

Toronto, Ontario M5G 1V2

Direct Line: (416) 597-3371

Fax: (416) 597-3370

These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.

A version of this article originally appeared in the Law360 Canada published by LexisNexis Canada Inc.

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