Jack Daniel’s is Not Amused by Bad Spaniels Chew Toy;
Publishers Awarded Summary Judgment Against Internet Archive

On Monday, April 3, 2023, Chris Kopitzke will lead the discussion about a pending Supreme Court trademark case concerning a dog chew toy, as well as a recent copyright decision out of the Southern District of New York granting summary judgment against the Internet Archive.

Jack Daniel’s Properties v. VIP Products, No. 22-148 (S. Ct., argued March 22, 2023), presents the questions: (1)whether humorous use of another’s trademark as one’s own on a commercial product is subject to a traditional likelihood-of-confusion analysis under the Lanham Act, or instead should receive heightened First Amendment protection from trademark infringement claims; and (2) whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” and therefore bars as a matter of law a claim of dilution by tarnishment.
The Ninth Circuit opinion appealed from is available here, and the Amicus Curiae brief of the International Trademark Association “in Support of Neither Party” is available here.

For most I.P. attorneys, mention of the Internet Archive brings to mind the “Wayback Machine,” its website archiving service. But the Internet Archive has also been digitizing books since 2005, providing free downloads of books in the public domain. It also offers through its Open Library “controlled digital downloads” of e-books it has created by scanning copyright-protected books of which it owns hard copies. The Archive claims that this practice is legal under the first-sale and fair use doctrines. In 2020, near the beginning of the COVID-19 pandemic, the Archive created for a brief time the National Emergency Library, through which it loaned out multiple copies of digital books simultaneously. Four prominent publishers sued the Archive for “mass copyright infringement” via both the Open Library and the National Emergency Library. On March 24, a judge in the U.S. District Court for the Southern District of New York granted summary judgment to the publishers. opinion and order available here.


All are welcome to attend the program at noon Pacific Time. To join the discussion, please RSVP via email to elisham @ socalip.com (remove the spaces, which have been inserted to thwart spammers) by noon the day of the program to obtain a video conference link. This activity has been approved for one hour of CLE credit.