WASHINGTON — The Supreme Court said Monday it will review whether an Arizona pet toy maker infringed on Jack Daniel’s Old No. 7 trademark with its squeaky Bad Spaniels Old No. 2 dog toy.
A lawyer for VIP Products said no one would confuse their parody product, laced with dog poop humor, for the Whiskey Distiller’s products.
“It doesn’t say Jack Daniel’s, it says ‘Bad Spaniels Old No. 2 On Your Tennessee Carpet’ and it has a picture of a cartoon dog on it,” Bennett told Evan Cooper.
Lawyers for Jack Daniels did not immediately respond to a request for comment on Monday. But in their petition to the Supreme Court, they said that while “everyone likes a good joke”, VIP Products is “confusing consumers by taking advantage of Jack Daniel’s hard-earned goodwill”.
Bad Spaniels are part of a line of “Silly Squeakers” toys from VIPs that play on the names of alcoholic and non-alcoholic drinks, from Jose the Perro, which imitates a bottle of tequila, to Mountain Drool, which looks like a bottle of soft drink.
The Bad Spaniels toy mimics Jack Daniel’s a little too much for the distiller’s comfort. The brown vinyl toy “copies the distinctive square bottle and black-and-white labeling” of a bottle of Jack Daniel’s whiskey, the distiller said in its filing.
The toy replaces the whiskey “40% alc. by vol. (80 proof)” with “43% poo by vol. (100% smelly)” and includes a notice in small print on the back stating that the toy “is not affiliated with Jack Daniel’s Distillery.” But other features of the fake bottle “are nearly identical,” the distiller’s petition states.
VIP Products said the design was simply part of a “playful parody tradition”, which they say has been used for “more than half a century”, citing Topps’ Wacky Packages Trading Cards and the musician ” Weird Al” Yankovic, who became famous for his parodies of hit songs.
The legal battle began in 2014, when Jack Daniel’s wrote to VIP demanding that the company stop producing Bad Spaniels. VIP went to court, asking for a declaration that his toy did not infringe the distiller’s mark, and Jack Daniel’s fought back.
A federal district court initially sided with Jack Daniel’s, ruling that Bad Spaniels infringed its trademark. This was overturned on appeal, however, with the 9th United States Circuit Court of Appeals ruling that the dog toy, while “certainly not the equivalent of the Mona Lisa”, was still an expressive work protected by the Rogers test.
This test, named after former movie star Ginger Rogers, protects the use of the mark in expressive works.
Jack Daniel’s attempted to appeal this decision to the Supreme Court, but was denied. The case returned to the district court, which ruled “reluctantly” for VIP products, a decision upheld by the circuit court. This triggered the second successful appeal to the Supreme Court.
Cooper said Rogers’ test “is a more user-friendly way to approach the use of marks in expressive works.” He stated that products pass the Rogers test if they can show that a trademark has some artistic relevance to the expressive work and that its use does not explicitly mislead as to the source of this work.
The case has received support from a litany of leading trade associations and companies, including Levi Strauss & Co., Patagonia Inc., Campbell Soup and others.
In a written statement, a lawyer for the distillers and brewers groups said the association was “pleased” the Supreme Court decided to take up the case this time. Steffen Nathanael Johnson’s statement said the 9th Circuit’s interpretation of the Lanham Act – which protects trademarks – and the Rogers test “threatens the liquor industry’s ability to prevent the use of their trademarks in a way that appeals to minors”.
The International Trademark Association said it was not taking sides in the case, but filed a brief with the court arguing that Rogers’ test should not be applied so broadly. Vijay Kumar Toke, a lawyer for the association, said the circuit court’s decision strayed “from the roots of the test which lie in the analysis of traditionally expressive works”.
He pointed to the district court judge’s second decision, in which the judge “stated that it was hard to imagine any brand owner prevailing except in the most egregious and… only by going to the Supreme Court or Congress.”
But Cooper hopes to move beyond Rogers’ test, using this case as the catalyst for a national standard for parody works.
“We think it’s a very good case to do that because of the nature of what my client produced and what my client didn’t produce,” Cooper said Monday. “It produced a dog toy that was transformative in every way.”
He also added that he hopes the Supreme Court’s decision will shed some light on what constitutes a parody and that its ruling “may avoid a lot of litigation over what are clearly parodies.”