Cannabis brands are known for clever branding and advertising. In some instances, this gets cannabis companies in trouble. See Cannabis Trademark Litigation: Wrigley Wins. Sometimes cannabis companies try to hew the parody line when riffing on an existing trademark. See Reminder: The Parody Defense to Trademark Infringement is Tricky. As my cannabis litigation colleague, Jihee Ahn, explained:
“parody is a type of speech protected by the First Amendment. It is a “distorted imitation” of an original work for the purpose of commenting on it. In the right circumstances, parody can be asserted as a defense to trademark infringement.”
The U.S. Supreme Court recently agreed to hear a trademark case involving parody, a maker of squeaky dog toys, and Jack Daniel’s whiskey. The case is Jack Daniel’s Properties Inc. v. VIP Products LLC. Jack Daniel’s says that plastic dog toys tarnish its brand and violate its trademark rights. The manufacturer of the toy, the “Bad Spaniels Silly Squeaker,” contends the toy is a humorous parodies entitled to First Amendment protection. Here’s a visual:
Jack Daniel’s demanded the manufacturer cease selling the toy. The manufacturer refused and filed a lawsuit seeking a declaration that the toy did not infringe on Jack Daniel’s trademark rights. The district court found in favor of Jack Daniel’s and issued an injunction that prevented the manufacture and sale of the squeaky toy. The manufacturer appealed and the Ninth Circuit affirmed in part, but found the dog toy is an “expressive work” protected by the First Amendment. It therefore reversed the trademark dilution claim, vacated the judgment on trademark infringement and remanded.
Jack Daniel’s appealed to the Supreme Court and numerous business, like Campbell Soup and Levi Strauss, urged the court to take the case.
The Court is expected to hear argument in the spring of 2023. So stay tuned for updates on what is likely to be an important opinion on parody and trademark.
For more reading on cannabis and trademarks, see: