Jack Daniel’s Is Barking Mad

Jack Daniel’s Is Barking Mad

The latest chapter of First Amendment law involves both a trademark dispute and consumers’ scatological humor.

In November of last year, SCOTUS agreed to hear the tale of the Bad Spaniels Silly Squeaker, a dog toy manufactured by the Arizona-based company, VIP Products.^[1] Jack Daniel’s, the popular whiskey maker, argues that the toy impermissibly infringes on the company’s trademarks in violation of the Lanham Act and requests an injunction against VIP’s sale of the product.^[2]

The toy in question is a square-shaped plush bottle with a black and white label reading “the Old No. 2, on your Tennessee carpet”––a phrase that Jack Daniel’s claims is impermissibly close to its own bottles’ label, which features “Old No. 7 Brand Tennessee Sour Mash Whiskey.”^[3] Where Jack Daniel’s bottles indicate that the brand’s whiskey is 40% alcohol by volume, the toy in question is claimed to be “43% Poo by Vol.” and “100% Smelly.”^[4] But in an effort to combat these remarkable similarities, the toy’s packaging does include a tag reading, “This product is not affiliated with Jack Daniel Distillery.”^[5]

Jack Daniel’s claims that the toy rips off the brand’s iconic marks and trade dress, and that permitting the continued sale of the toy would mislead customers and allow VIP to profit from Jack Daniel’s hard-earned reputation. The brand “does not want its customers looking at their whiskey bottles and wondering why in the world Jack Daniel’s is talking about dogs defecating on Tennessee carpets,” according to the brief it had previously submitted to the Ninth Circuit.^[6]

This is not the first time this canine conundrum has knocked on the door of the nation’s highest court. Almost a decade ago, in 2014, Jack Daniel’s sent cease-and-desist letters to VIP over the Bad Spaniels toy, resulting in VIP’s lawsuit against the liquor brand.^[7] Following a bench trial, an Arizona federal judge ruled in 2018 that Bad Spaniels impermissibly infringes on the trademarks that Jack Daniel’s holds for its bottle and label, also known as trade dress.^[8] However, the Ninth Circuit overturned the district court in 2020, reasoning that the toy was an “expressive work” with a “humorous message” that was therefore entitled to First Amendment protection.^[9] Jack Daniel’s subsequently appealed to the Supreme Court, arguing that the Bad Spaniels toy was anything but an expressive work and that the Ninth Circuit’s decision ignored the product’s fundamentally commercial essence.^[10] SCOTUS initially declined to hear the case in January 2021, sending the case back down to the district court.^[11]

There, the district court granted summary judgment in favor of VIP,^[12] followed by the Ninth Circuit’s affirmation without an opinion.^[13] Jack Daniel’s submitted a second petition for SCOTUS review, with the Justices agreeing to hear the case in November 2022 this second time around.^[14]

In its brief to the Supreme Court, Jack Daniel’s argues that the Ninth Circuit applied the wrong standard when reviewing the brand’s trademark infringement claim.^[15] The liquor company argues that the Ninth Circuit erroneously relied on the Rogers test when evaluating the Bad Spaniels toy, instead of the standard established by the Lanham Act.^[16] Rogers v. Grimaldi, a 1989 case from the Second Circuit, allows for the use of a trademark in an expressive work, so long as the use is artistically relevant and not explicitly misleading.^[17] Jack Daniel’s argues that this is a heightened standard compared to the Lanham Act’s likelihood-of-confusion test, and that utilizing Rogers over the Lanham standard undermines the Act’s “twin purposes” of protecting consumers and trademark owners.^[18] The whiskey brand reasons that because it previously proved likelihood of confusion at the district court back in 2018,^[19] the matter should have ended there, and that the Ninth Circuit’s reliance on Rogers “privileges [trademark] infringers’ speech over mark owners’ own expressive speech” and intellectual property rights.^[20]

Jack Daniel’s also contends that even if Rogers was the proper test to apply, the Ninth Circuit’s decision erroneously characterized VIP’s use of Jack Daniel’s trademarks as non-commercial and the Bad Spaniels toy as an expressive work. “In ordinary parlance … no one would call using a mark to sell a good or service ‘noncommercial’,” the whiskey brand’s brief states.^[21] “VIP’s use of Jack Daniel’s marks to sell its dog toy (and to do so for profit) is a prototypical case of commercial use,” and is clearly not an expressive work, the brief continues.^[22] The liquor brand lamented that if VIP is allowed to confuse consumers with dog toys, then other funny infringers may be able to do the same with juice boxes or marijuana-infused candy, putting consumers and children at risk.^[23]

In response, VIP says that Jack Daniel’s can’t take a joke. “VIP sells a dog toy called ‘Bad Spaniels Silly Squeaker’ with a picture of a dog and no reference to alcohol, and the only people who would understand what was being parodied are people already familiar with whiskey,” the toy manufacturer’s brief states.^[24] “No one—not a child, not a dog—is going to be harmed by VIP’s parody.”^[25] VIP’s brief continues, “It is ironic that America’s leading distiller of whiskey both lacks a sense of humor and does not recognize when it––and everyone else––has had enough.”^[26]

Major companies such as Campbell Soup, Patagonia, and jeans maker Levi Strauss urged the Justices to hear the dispute, reasoning that the outcome will provide much-needed clarification of the standard to be applied to parodic works in trademark infringement claims.^[27] “‘We are pleased that the Supreme Court has decided to hear this case,’ said Courtney Armour, the chief legal officer for the Distilled Spirits Council, a trade group that represents major spirits brands, including Jack Daniel’s parent company Brown-Forman.”^[28] “The alcohol beverage industry has long worked to ensure that our products are advertised in a responsible manner, and trademark infringers can severely jeopardize these efforts.”^[29]

Bad Spaniels is not the only dog toy that has been the focus of a recent trademark infringement claim. In 2007, the Fourth Circuit ruled in favor of the company Haute Diggity Dog, stating that the brand was entitled to sell “Chewy Vuiton” dog toys resembling miniature Louis Vuitton handbags.^[30] There, the court reasoned that the toy was nothing more than a “joking and amusing parody.”^[31] “The furry little ‘Chewy Vuiton’ imitation, as something to be chewed by a dog, pokes fun at the elegance and expensiveness of a Louis Vuitton handbag, which must not be chewed by a dog,” the opinion reads.^[32] “The dog toy irreverently presents haute couture as an object for casual canine destruction. The satire is unmistakable.”^[33] However, precedent is not all hostile towards Jack Daniel’s claim. In 2008, a federal judge in Missouri issued a preliminary injunction against the continued sale of “ButtWiper,” another VIP-manufactured dog toy, finding that the product created a “likelihood of confusion” with the bottles of beer manufacturer Budweiser, thereby impermissibly infringing on the company’s trademarks.^[34]

While the outcome of this dispute remains uncertain for now, what is certain is the impact this case will have on how federal law regards parody and intellectual property infringement. SCOTUS will likely hear the parties’ oral arguments in March and issue a decision by June.^[35]