The High Council has sided with Jack Daniels and against a pet company that sells poop-themed dog toys in the shape of the brand’s iconic whiskey bottle in a trademark dispute that caught the attention of the country’s most recognized brands.
Jack Daniel’s Properties Inc, owned by Brown-Forman Corp, argued that the toy, which resembles the distiller’s widely recognized black-label whiskey bottle, but replacing the label with “Bad Spaniels” could confuse consumers as to who made the product and potentially tarnish the company name.
VIP Products, an Arizona-based dog toy company, defended itself, claiming that the toy is a “parody” and qualifies as an “expressive work” protected by the First Amendment to the U.S. Constitution and entitled to freedom of speech under the law .
The whiskey maker, in turn, said there was a likelihood of confusion, meaning the poop-themed product was in violation of trademark law.
In a unanimous 9-0 decision Thursday, the Supreme Court ruled against VIP Products, overturning a federal appeals court ruling that had supported the dog toy company and sending the case back to a lower court for additional review.
VIP Products, which makes poop-shaped dog toys like whiskey, is at the center of a trademark dispute that the U.S. Supreme Court ruled on Thursday in a case that could redefine how the judiciary applies constitutional freedom of speech to trademark law
Jack Daniel’s Properties Inc argued that the toy, which resembles the distiller’s widely recognized black-label whiskey bottle, could confuse consumers as to who made the product and potentially taint the company’s name.
The Supreme Court said lower courts must now consider whether VIP Products’ dog toys are too similar to the iconic Jack Daniels bottle, causing consumer confusion.
Justice Elena Kagan, who drafted the decision, said VIP’s alleged infringement of the Jack Daniel’s trademark “feels within the heart of trademark law and receives no special protection from the First Amendment.”
The Lanham Act is the law that prohibits the use of a trademark in a way that is likely to cause confusion as to its origin, and Jack Daniels claimed that the dog toy likely confused consumers and thereby infringed their copyright.
“We only believe that it is not appropriate for the accused infringer to have used a trademark to indicate the source of his own goods – in other words, he has used a trademark as a trademark,” Kagan wrote.
“A parody must ‘evoke’ ‘sufficiently original’ to make the object of its critical humor recognizable,” Kagan wrote. “But to succeed, the parody must also create contrasts, so that the message of mockery or sharp humor becomes clear.”
And once that’s done (if that’s happened), a parody won’t often cause confusion. Self-mockery is one thing; self-mockery much less common,” she added.
Well-known brands, including Campbell Soup Co., Nike Inc. and Levi Strauss & Co., supported Jack Daniel’s and filed statements alleging that the appellate court’s interpretation of the law threatened the protection of trademarks that protect the value of iconic brands.
Free speech advocates such as the Electronic Frontier Foundation filed statements in support of VIP, citing the importance of making a joke freely.
The chew toy has poop gags, one that reads the phrase “Old No. 2′, referring to the ‘Old No. 7’ label on the whiskey bottles. Another says ‘the Old No. 2, on your Tennessee Carpet,” referring to the main label “Old No. 7 Tennessee Sour Mash Whiskey’ written on the whiskey bottles.
References to alcohol content on a Jack Daniel’s bottle, ‘40% ALC. ON VOL. (80 PROOF),’ became ‘43% POO BY VOL.’ and “100% STINK.”
“The parody is designed to fool brands that take themselves seriously,” said VIP Products representative Bennett Cooper.
Dr. Alex Simonson, a survey expert with 30 years of experience conducting trademark infringement investigations, said that while the court wouldn’t allow the spoof product to claim First Amendment protection, they also didn’t say the toy couldn’t be sold. .
“The court did not grant the parody special first amendment protection, but the court did not find the parody product infringing,” said Simonson, president of research firm Simonson Associates.
Judge Elena Kagan (pictured) said VIP’s alleged infringement of the Jack Daniel’s trademark won’t receive special First Amendment protection and the Supreme Court sided with the alcohol company 9-0, sending the case back to district court for a settlement to meet
The case had worked its way up the San Francisco court system before reaching the Supreme Court, involving well-known brands such as Campbell Soup Co., Nike Inc. and Levi Strauss & Co. who supported Jack Daniel’s
The case had worked its way up the San Francisco court system before reaching the Supreme Court, but was sent back to the lower courts.
The San Francisco-based 9th US Circuit Court of Appeals ruled in favor of VIP products in 2020 on two separate grounds.
The 9th Circuit said the Bad Spaniels toy was an “expressive work” and thus may have been protected under the First Amendment from Jack Daniel’s trademark infringement claim.
At this point, the 9th Circuit returned the case to an Arizona federal judge for further proceedings with instructions to conduct a legal test arising from a landmark 1989 trademark dispute between actress Ginger Rogers and film director Federico Fellini.
The judge ruled in favor of VIP Products after applying the so-called ‘Rogers test’, which allows artists to lawfully use another’s trademark if it is artistically relevant to their work and would not explicitly mislead consumers as to its source .
The 9th Circuit also ruled that VIP Product’s use of the Jack Daniel’s trademark was non-commercial because it was used not only to sell dog toys, but also “to convey a humorous message,” thus making it distinctive characteristic of the distiller.
The product remains on the shelves until a decision is made at the court level, which the experts say may be harder to achieve than it seems.
President Joe Biden’s administration supports Jack Daniel’s appeal. A ruling is expected at the end of June.