Trademark Protection Versus Parodic Use in Commerce: A Comparative Analysis of the US Approach Post Jack Daniel’s Properties v. VIP Products and the German Likelihood of Confusion Analysis

Abstract

In June 2023, the US Supreme Court delivered its highly anticipated verdict in Jack Daniel’s Properties v. VIP Products. The case involves a parodic use of the famous Jack Daniel’s Tennessee whiskey trade dress, name, logo and appearance by VIP Products, which sells dog toys called ‘Silly Squeakers.’ The disputed toy, named ‘Bad Spaniels,’ resembles the whiskey bottle in shape and design but with humorous alterations. Jack Daniel’s argued that this use could confuse consumers and harm the company’s reputation. VIP Products, on the other hand, claimed it was exercising its First Amendment right to free speech through parody. Jack Daniel’s requested VIP Products to stop advertising and selling the toy. The central issue is the balance between brand protection under US Trademark Law and the right to a parodic use in a commercial context when a mark is used as a mark with a source-identifying purpose. Additionally, the impact of consumer surveys for determining the likelihood of confusion in case of an infringement action is emphasized. Overall, the case raises critical questions about trademark protection and freedom of speech, with potential implications for future parodic uses of famous marks in commercial contexts. The distinction between actions for infringement and dilution by tarnishment lies in their respective purposes. Dilution actions aim to safeguard the reputation of a famous mark’s owner, while infringement actions seek to prevent confusion among consumers. These fundamental principles hold true in both US and German trademark law. The forthcoming analysis will delve into the implications and consequences of the US Supreme Court’s ruling, comparing it with pertinent German case law concerning freedom of speech and artistic expression. Particular focus will be given to the potential authorization of parodic use of a mark resembling another’s trademark for commercial purposes. Notably, a relevant case involving canines, referred to as the ‘Leaping Poodle,’ will be central to this contemplation.