The Supreme Court on Thursday sided with Jack Daniels in a dispute over a poop-themed dog toy that parodied Jack Daniels’ iconic liquor bottle, arguing that the toy could be used for First Amendment speech. It ruled that the lower court’s ruling that it was subject to protection of liberty was erroneous.
A unanimous opinion written by Judge Elena Kagan allows liquor makers to revive their trademark lawsuits against VIP Products in lower courts. Meanwhile, the “Bad Spaniels Silly Squeaker” toy continues to hit the market.
In the center of the case is a toy made by VIP Products that bears a striking resemblance to a bottle of Jack Daniel’s. The distillery sued the company for violating federal trademark law over the scatologically humorous toy. Federal trademark law is usually focused on how likely consumers are to confuse an alleged infringement with something made by the true owner of the trademark.
The court’s ruling was in favor of Jack Daniel’s, which argued that the Court of Appeals’ ruling that toys were “non-commercial” and therefore constitutionally protected was erroneous. Judges refused to grant the distillery’s request for the complete scrapping of Jack Daniel’s. Trying to do what the appeals court used in ruling in favor of the toy would give trademark owners wide latitude to sue companies that parody consumer product trademarks.
“Today’s opinion is narrow. “We do not determine whether the Rogers test is appropriate or to what extent the ‘non-commercial use’ exclusion extends,” Cagan wrote, adding: added: someone else’s product. ”
“We only argue that it is not proper for an accused infringer to use a trademark to designate the source of their goods, i.e. use a trademark as a trademark. This kind of use falls at the heart of trademark law and doesn’t get special protection under the First Amendment,” she said.
Thursday’s ruling is the second time a court has handed down a judgment this term in an intellectual property dispute. In May, judges ruled against the late Andy Warhol, accusing him of infringing the photographer’s copyright when he produced a series of silkscreens based on photographs of the late singer Prince.
The Jack Daniels case, which contained serious concerns about First Amendment protections in trademark disputes, provided an opportunity to take a break from some of the more politically troubled cases the court heard this term. The judges occasionally burst into laughter as they debated this humorous topic during oral argument. March.
“What’s in it? What’s the parody here? Mr. Kagan turned to a toy company lawyer and the courtroom burst into laughter. ‘Because maybe I just don’t have a sense of humor.’ No, but what is parody?”
Cagan went on to list a number of different marks the company makes fun of, which made Judge Clarence Thomas laugh. “Doggy Walker, Dos Perros, Sumela Arpo, Cora the Dog, Mountain Drool. Are all these companies taking themselves too seriously?”
The VIP toy “Bad Spaniels Silly Squeaker” is roughly the same shape as a Jack Daniel’s bottle. Plastic bottles have similar font styles and use black labels, as do glass bottles.
VIP borrows Jack Daniel’s ‘Old No. 7 Brand Tennessee Sour Mash Whiskey’ and sells ‘The Old No. 2 On Your Tennessee Carpet’, named after dog excrement. And change the “ALC40%” of the sake bottle. BY VOL. (80 proof)”, “43% POO BY VOL.” and “100% stinky”.
A tag attached to the toy states, “Not affiliated with Jack Daniel’s Distillery.”
But that alone wasn’t enough to stop Jack Daniel’s from suing the company for removing the toy from the market. The distillery says VIP violates federal trademark law and references to the toy, specifically dog excrement, mislead consumers into thinking the product is from “the oldest registered distillery in the United States.” He claimed that it would damage his reputation because it could.
“Certainly, everyone likes a good joke,” Jack Daniel’s attorney wrote in the court papers. “But the ‘jokes’ aimed at VIP profits are using Jack Daniel’s hard-earned goodwill to confuse consumers.”
A district court ruled in Jack Daniel’s favor, finding that Jack Daniel’s toys infringed the distillery’s trademark. However, an appeals court later sided with VIP Products and invoked the so-called Rogers test.
The court said VIP’s use of the Jack Daniel’s trademark was non-commercial and was done humorously for “expressive works,” and therefore protected under the First Amendment to the U.S. Constitution.
Jack Daniel’s attorneys told the judge in court documents that the Court of Appeals’ ruling “gives copycats a license to prey on unsuspecting consumers and mark owners at will.” He warned that companies could use trademarks they don’t own if the ruling isn’t overturned. Products that are considered unserious flood the market.
“No one disputes that VIP is trying to be funny, but alcohol and toys don’t mix well, and the same goes for drinks and excrement,” they wrote. “The next incident could involve a more nasty mix of food and poison, cartoon characters and pornography, children’s toys and illegal drugs.”
Several major companies, including Nike and Levi Strauss & Co., have also filed briefs in court in support of Jack Daniel’s.
“Defendants often have motivations to label them as such, but not all humorous uses of other people’s trademarks are parodies,” Nike said in a brief. “Therefore, courts need to take a disciplined approach to this important classification when ‘parody’ is asserted.”
This story has been updated with additional details.