Check out my article published October 15, 2024 on the “IP Watchdog” legal news website!
This article was published as a predictive piece prior to the trial court’s long-awaited ruling in January 2025 in Jack Daniel’s v. VIP Products. The parties’ decade-long trademark dispute began in 2014 in Arizona federal court and worked its way up through the courts, garnering a landmark U.S. Supreme Court ruling in 2023 before being remanded back to the original trial court.
UPDATE: A few weeks after this article was published, the Arizona district court issued its final ruling regarding VIP’s “Bad Spaniels” parody dog toys, which were alleged to have violated Jack Daniel’s trademarks. The court found that while the toys did not confuse consumers so as to constitute infringement, they did dilute the trademarks by creating negative associations with the brand and thus tarnishing the Jack Daniel’s marks.
The focus of my article was on VIP’s argument before the trial court that dilution should not apply because it is an unconstitutional restraint on speech. As I predicted, the trial court did not rule on the constitutional free-speech argument. In the briefing, Jack Daniel’s had urged the lower court to consider the argument waived because it was not raised at previous stages of the case; however, that was not the reason that the court adopted. Instead, the court said that VIP could not defend the trademark claims based on free-speech considerations because VIP’s answer (originally filed a decade ago) did not state the First Amendment as an affirmative defense.
I can only image VIP’s disappointment in receiving this ruling, having missed consideration of the constitutional issue based on a pleading technicality. I suspect, however, that this will not be the last time that the doctrine of trademark dilution, which prohibits tarnishment of famous marks, will be challenged in the courts on First Amendment grounds.
READ FULL ARTICLE PUBLISHED ON IP WATCHDOG.
CITATION: Sara Gold, Jack Daniel’s Continues, with Trademark Dilution as the Next Battlegrounds, IP Watchdog (Oct. 15, 2024, 9:38 AM), available at https://ipwatchdog.com/2024/10/15/jack-daniels-continues-trademark-dilution-new-battleground/id=182061/