The Supreme Court ruled Thursday that the First Amendment does not protect a chew toy for dogs that resembles a bottle of Jack Daniel’s from a lawsuit claiming trademark infringement.
The toy, the Bad Spaniels Silly Squeaker, has the shape and other quirks of a Jack Daniel’s bottle but, as an appeals court judge put it, “light-hearted, dog-related modifications.”
The words “Old No. 7 Brand Tennessee Sour Mash Whiskey” on the bottle are replaced on the toy with “the Old No. 2, on your Tennessee carpet.” Where Jack Daniel’s says its product is 40 percent alcohol by volume, Bad Spaniels says it’s “43 percent poo.”
A tag attached to the toy says it’s “not affiliated with Jack Daniel Distillery.”
Justice Elena Kagan, writing for a unanimous court, seemed amused by the argument. “This case is about dog toys and whiskey,” he wrote, “two things that rarely appear in the same sentence.”
He added that the characteristics of the whiskey bottle are familiar to almost everyone.
“A bottle of Jack Daniel’s — no, Jack Daniel’s Old No. 7 Tennessee Sour Mash Whiskey — boasts a fair number of trademarks,” he wrote. “Remember what the bottle looks like (or better yet, grab a bottle from where you store wine; it’s probably there).”
After copying a color photograph of the bottle, he continued: “’Jack Daniel’s’ is a registered trademark, as is ‘Old No. 7.’ So is Jack Daniel’s arched logo. And the stylized label with filigree (ie, swirling white lines). Finally, what could be thought of as the platform for all those marks — the distinctive square whiskey bottle — is itself registered.”
Trademark cases are usually turned on if the public is likely to be confused about the origin of a product. In the Bad Spaniels case, a unanimous three-judge panel of the Court of Appeals for the Ninth Circuit, in San Francisco, held that the First Amendment requires a more demanding test when the challenged product expresses an idea or point of view.
“The Bad Spaniels toy, while certainly no Mona Lisa equivalent, is an expressive work” that uses cheeky humor and wordplay to poke fun at Jack Daniel’s, wrote Judge Andrew D. Hurwitz for on the panel.
But Justice Kagan said there was no role for “any threshold First Amendment filter” in the case. Instead, he wrote, “an infringement claim here rises or falls on the likelihood of confusion.”
That’s the classic question in trademark cases. But Justice Kagan, sending the case back to the lower courts to consider it, said the mockery of the wine bottle chew toy had to be considered in the analysis, because it was not obvious that consumers would think that Jack Daniel’s is responsible for a funny toy. to oneself.
Justice Samuel A. Alito Jr. made a similar point when the case was argued in March, citing a pitch meeting with a Jack Daniel’s executive.
“Someone at Jack Daniel’s came to the CEO and said: ‘I have a great idea for a product that we’re going to make. It’s going to be a dog toy, and it’s going to have a label that looks exactly like our label, and it’s going to have with a name that sounds very much like our name, Bad Spaniels, and what it says is in this dog. the toy is dog urine,'” Justice Alito said, suggesting that consumers are unlikely to think that the chew toy is made or endorsed by the distiller.
Justice Kagan reiterated the point in her opinion. “Consumers,” he wrote, “are unlikely to think that the maker of a mocked product is himself making the mockery.” She added, “Self-deprecation is one thing; self-deprecation is less common.”
In a concurring opinion, Justice Sonia Sotomayor, joined by Justice Alito, cautioned lower courts against being overly credulous in assessing surveys, which are common in trademark litigation, “purporting to show that the consumer is likely to be confused by an allegedly infringing product.”
Those surveys, he wrote, “may reflect a false belief among some survey respondents that all parodies require permission from the owner of the parodied mark.”
In a brief statement by the Supreme Court in the case, Jack Daniel’s Properties v. VIP Products, No. 22-148, attorneys for the distiller wrote that “everyone likes a good joke.” But the chew toy, the brief said, “is confusing consumers by taking advantage of Jack Daniel’s hard-earned goodwill.”
Lawyers for the toy maker, VIP Products, said it follows “a playful parodic tradition that stretches back more than half a century from Topps’s Wacky Packages trading cards through ‘Weird Al’ Yankovic.”
Trading cards, for fake products imitating the real thing, such as Ratz Crackers, Jolly Mean Giant and Gulp Oil, were very popular in the 1970s, for a time outselling Topps baseball cards. “However the world has not ended,” VIP Products told the magistrates.
