Supreme Court: Dog Toy Parody of Jack Daniel’s Is Trademark Violation
WASHINGTON — The Supreme Court ruled Thursday in favor of Jack Daniel’s in saying a dog toy that parodied the liquor distillery’s whiskey bottles infringed its trademark.
The ruling redefines when parodies intended to be humorous overstep their bounds into trademark infringement.
The Lynchburg, Tennessee-based Jack Daniel’s Distillery sued VIP Products LLC in 2017 over its dog chew toy shaped and colored like a whiskey bottle. Instead of saying “Jack Daniel’s” on the label, it said, “Bad Spaniels.”
The similarly designed label replaced “Old No. 7 Tennessee Whiskey” with “The Old No. 2 On Your Tennessee Carpet” in an apparent reference to dog poop.
Jack Daniel’s argued the design of the toy diluted the value of its trademark associated with the popular whiskey.
The Lanham Act of federal law classifies trademark infringement as images or words that could confuse consumers about whether they are associated with someone else’s commercial product or service that is legally protected as a trademark.
VIP Products said there was no trademark infringement because its parody was allowed as free speech under the First Amendment.
It based its argument on the Rogers test of trademark law, which says trademarks can be used without permission if they are part of “artistically expressive” work and they do not “explicitly mislead” customers into believing the parody is associated with the original trademarked item.
In those cases, the use of someone else’s trademark is considered a “fair use,” according to VIP Products.
During oral arguments in March, Bennett Cooper, an attorney for VIP Products, told the Supreme Court, “It’s simply making a joke, and the joke is noncommercial.”
The Ninth Circuit Court of Appeals in San Francisco, California, agreed with VIP Products. The court said that because “Bad Spaniels” was a parody, it was a noncommercial use of the Jack Daniel’s trademark.
The Supreme Court disagreed, saying the lower court went too far in defining parodies as free speech.
“The use of a mark does not count as noncommercial just because it parodies, or otherwise comments on, another’s products,” said the ruling written by Justice Elena Kagan.
The unanimous decision of the Supreme Court added, “The Ninth Circuit’s expansive view of the noncommercial use exclusion — that parody is always exempt … effectively nullifies Congress’ express limit on the fair-use exclusion for parody.”
Jack Daniel’s’ appeal won support from large companies like Nike, Campbell Soup Company and Patagonia Inc., all of whom have dealt with trademark disputes.
During the oral arguments, Justice Samuel Alito cast doubt on whether VIP Products’ intended joke with the Bad Spaniels label was a tame use of the Jack Daniel’s trademark.
He said it was unlikely “any reasonable person” would assume Jack Daniel’s would approve of the dog toy.
“Let me envision this scene,” Alito told VIP Products’ attorneys. “Somebody in Jack Daniel’s comes to the CEO and says, ‘I have a great idea for a product that we’re going to produce. It’s going to be a dog toy, and it’s going to have a label that looks a lot like our label, and it’s going to have a name that looks a lot like our name. [And what’s] purportedly in this dog toy is dog urine.’ Do you think the CEO is going to say, ‘That’s a great idea, we’re going to produce that thing’?”
The Supreme court sent the case back to a lower court for further proceedings consistent with its ruling.
Michael Kondoudis, a Washington, D.C., trademark attorney, explained the ruling to The Well News by saying, “If you’re selling [products] in commerce, if you’re trading on a name, if there’s a likelihood of confusion, there’s probably a trademark infringement.”
In the case against VIP Products, “They were selling products trading on the good name of Jack Daniel’s.”
The case is Jack Daniel’s Properties Inc. v. VIP Products LLC, case number 22-148, in the Supreme Court of the United States.
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