supreme court ruled on thursday The First Amendment to the U.S. Constitution did not protect dog chew toys resembling Jack Daniel’s bottles from lawsuits alleging trademark infringement.
This toy, the Bad Spaniels Silly Squeaker, features a Jack Daniel’s bottle shape and other features, but As the Court of Appeals Judge said“Lighthearted, dog-related alterations”.
The words “Old No. 7 Brand Tennessee Sour Mash Whiskey” on the bottle have been replaced with “Old No. 2 on your Tennessee carpet” on the toy. Jack Daniel’s says their products are 40 percent alcohol, while Bad Spaniels are said to be “43 percent poop.”
The tag attached to the toy states, “Not affiliated with Jack Daniel’s Distillery.”
Justice Elena Kagan, writing for the unanimous court, seemed amused by the controversy. “This lawsuit concerns dog toys and whiskey, and the two items rarely appear in the same sentence,” she wrote.
She added that the characteristics of whiskey bottles are familiar to almost everyone.
“A bottle of Jack Daniel’s, no, Jack Daniel’s Old No. 7 Tennessee Sour Mash Whiskey, has quite a few trademarks on it,” she wrote. “Remember what the bottle looks like (or better yet, get it out of where you keep your booze; it’s probably there).”
After reproducing a color photograph of the bottle, she continued: “‘Jack Daniels’ is a registered trademark, as is ‘Old No. 7’.” So is the arched Jack Daniels logo. And a stylized label with filigree (i.e. swirling white lines). Finally, it registers what can be considered the foundation of all these marks: the whiskey’s characteristic square bottle itself. ”
Trademark litigation usually raises the question of whether the public may be confused about the provenance of a product. For bad spaniels, unanimous panel of three judges San Francisco’s Ninth Circuit Court of Appeals said the First Amendment requires more rigorous testing if the challenged product expresses an idea or point of view.
“The Bad Spaniel dog toy is certainly no match for the Mona Lisa, but it is an expressive piece that uses irreverent humor and wordplay to make fun of Jack Daniels.” Judge Andrew D. Hurwitz written on the panel.
But Judge Kagan said there was no role for a “First Amendment standard filter” in this case. Rather, “the infringement claim here scales with the potential for confusion,” she wrote.
That is the typical investigation in a trademark case. But in remanding the case to lower court for analysis, Judge Kagan said the chew toy’s ridicule of liquor bottles needed to be taken into account in the analysis, arguing that the consumer held Jack Daniel’s company responsible for the teasing toy. He said it was not clear whether he would consider by itself.
Judge Samuel A. Alito Jr. made a similar point when the case was heard in March, imagining a pitching meeting with Jack Daniel’s executives.
“Someone from Jack Daniel’s comes up to the CEO and says, ‘I have a great idea for a product we’re going to make.’ is going to sound a lot like our name, ‘Bad Spaniels,’ and what they say is in this dog toy is dog urine,” said Judge Alito, and consumers He suggested that it was unlikely that the chew toy was manufactured or approved by the distillery.
Justice Cagan expressed a similar opinion. “Consumers find it hard to believe that the makers of the products ridiculed are themselves doing the ridicule,” she wrote. She added: Self-mockery is not normal. ”
In a concurring opinion joined by Justice Alito, Justice Sonia Sotomayor asked the lower court to conduct a “investigation to the effect that the allegedly infringing product is likely to confuse consumers,” a common practice in trademark litigation. warned not to overestimate the evaluation of ”
These surveys “may reflect the erroneous belief of some survey respondents that all parody requires the permission of the owner of the mark parodied,” she wrote.
of Supreme Court Brief In Jack Daniel’s Properties v. VIP Products, No. 22-148, the distiller’s attorney wrote, “Everybody likes a good joke.” But the chew toy “uses Jack Daniel’s hard-earned goodwill to confuse consumers,” the brief reads.
A lawyer for VIP Products, the company that makes the toys, said the company “follows more than half a century of playful parody tradition.” Topps Wacky Package Trading Cards Through “Weird Al” Yankovic. ”
Counterfeit trading cards that mimic the real thing, such as the Lut’s Cracker, the Jolly Mean Giant, and the Gulp Oil, were so popular in the 1970s that they once surpassed the top baseball cards. “But the world didn’t end” VIP Products told the judge.
