Washington
CNN
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The Supreme Court on Thursday sided with Jack Daniel’s in a dispute over a poo-themed dog toy that pokes fun at its iconic wine bottle, ruling that a lower court erred when it said the toy was covered by First Amendment free speech protections.
The concurring opinion written by Justice Elena Kagan allows the winemaker to revive its trademark lawsuit against VIP Products in lower courts. In the meantime, the “Bad Spaniels Silly Squeaker” toy remains on the market.
At the center of the case is a toy created by VIP Products that bears a striking resemblance to Jack Daniel’s bottles. The distiller sued the company over the toy — which was full of scatological humor — alleging it violated federal trademark law, which often centers on how likely a consumer would confuse an alleged infringer with something that made by the true owner of the mark.
Although the court’s decision was a win for Jack Daniel’s — which argued that an appeals court erred when it said the toy was “non-commercial” and therefore enjoyed constitutional protection — the justices rejected the distiller’s request to completely throw out the appeals court test used when it ruled in favor of the toy, a move that would give trademark holders wide latitude to sue companies that make fun of their marks on consumer product.
“Today’s opinion is narrow. We do not decide whether the Rogers test is ever applicable, or how far ‘noncommercial use’ goes,” Kagan wrote, adding: “Use of a mark does not count as noncommercial merely because it parodies, or otherwise comments on, another’s product.”
“We simply believe that it is inappropriate when the accused infringer uses a trademark to designate the origin of its own goods – in other words, uses a trademark as a trademark. This type of use is at the heart of the law trademark, and receives no special First Amendment protection,” he said.
Thursday’s ruling is the second the court has handed down this term in an intellectual property dispute. In May, magistrates ruled against the late Andy Warhol, claiming the artist infringed a photographer’s copyright when he created a series of silk screens based on a photograph of the late singer Prince.
“We are pleased with the Supreme Court’s unanimous decision that recognizes the rights of brand owners,” Svend Jansen, a spokesman for Jack Daniel’s, said in a statement. “We will continue to support efforts to protect the goodwill and strength of this iconic trademark.”
An attorney for VIP Products declined CNN’s request for comment.
Legal experts said that despite the court handing a narrowly tailored win to the brewer, the toy could still prevail when lower courts revisit the dispute.
“All hope is not always lost for VIP Products. Although it does not enjoy the broad First Amendment protection afforded to it by the Ninth Circuit, VIP will still have the opportunity to argue in a lower court that the use of Bad Spaniels is unlikely to cause confusion in the marketplace,” said J. Michael Keyes, an attorney specializing in intellectual property law.
Although the Jack Daniel’s case raises serious concerns about First Amendment protections in trademark disputes, it provided a respite from some of the more politically charged cases the court has heard this term, if where justices sometimes laugh as they discuss the humorous topic during oral arguments in March.
“What’s wrong with this? What’s a parody here?” Kagan asked a lawyer for the toy company, causing the courtroom to laugh. “Because maybe I just don’t have a sense of humor. But what’s a parody?”
Kagan went on to list several different marks the company made fun of, which drew a laugh from Justice Clarence Thomas: “Doggie Walker, Dos Perros, Smella Arpaw, Canine Cola, Mountain Drool. Are all these companies taken too seriously themselves?”
VIP’s “Bad Spaniels Silly Squeaker” toy has the same general shape as the Jack Daniel’s bottle. The plastic bottle, like its glass counterpart, has a similar font style and uses a black label.
VIP borrows Jack Daniel’s “Old No. 7 Brand Tennessee Sour Mash Whiskey” to sell “The Old No. 2 On Your Tennessee Carpet,” a reference to dog poop. And it changes the “40% ALC of the wine bottle. BY VOL. (80 PROOF)” with “43% POO BY VOL.” and “100% STINKS.”
A tag attached to the toy says it’s “not affiliated with Jack Daniel Distillery.”
However, that wasn’t enough to stop Jack Daniel’s from suing the company in a bid to take the toy off the market. The distiller argued that VIP violated federal trademark law and that the toy, particularly the dog poop references, damaged its reputation because it could confuse consumers into thinking the product belonged to ” oldest registered distillery in the United States.”
“Sure, everybody likes a good joke,” attorneys for Jack Daniel’s wrote in court papers. “But the VIP ‘joke’ that drives revenue confuses consumers by taking advantage of Jack Daniel’s hard-earned goodwill.”
A district court ruled in favor of Jack Daniel’s, finding that the toy infringed on the distiller’s trademark. But an appeals court eventually sided with VIP Products, invoking the so-called Rogers Test.
The court held that VIP’s use of the Jack Daniel’s trademark was noncommercial and because it was made humorous for an “expressive work,” it was protected by the First Amendment.
Attorneys for Jack Daniel’s told the justices in court papers that the appeals court ruling “gives copycats a free license to prey on unsuspecting consumers and mark holders,” and warns that if this is not reversed, companies may use trademarks they do not own. flood the markets with supposedly frivolous products.
“No one disputes that VIP is trying to be funny. But alcohol and toys don’t mix, and neither do drinks and dirt,” they wrote. “The next case may involve more disturbing combinations – food and poison, cartoon characters and pornography, children’s toys and illegal drugs, and so on.”
Several large companies also filed briefs in court in support of Jack Daniel’s, including Nike and Levi Strauss & Co.
“Although defendants often have an incentive to label it, not every humorous use of another’s trademark is a parody,” Nike wrote in its brief. “Therefore, courts must take a disciplined approach to this important classification in cases where ‘parody’ is claimed.”
This story has been updated with additional details.
