March 19 (UPI) — The Supreme Court will hear oral arguments Wednesday in a case between Jack Daniels and a company that sells a dog toy that parodies its iconic whiskey bottle.
In a petition to the court, the marquee brand in Tennessee whiskey claims that VIP Products’ dog toy damages the Jack Daniels brand and confuses its customer base, violating trademark law. The hearing comes after the U.S. Court of Appeals for the 9th Circuit landed on the side of the toymaker in 2020.
The district court said that VIP Products using the likeness of a Jack Daniels bottle to “sell poop-themed dog toys was likely to confuse consumers, infringed Jack Daniel’s marks, and tarnished Jack Daniel’s reputation” but ruled that VIP’s parody bottle was granted special protection as expressive content under the First Amendment.
The toy in question, labeled “Bad Spaniels” and parodying Jack Daniels’ “Old No. 7” with “Old No. 2 on Your Tennessee Carpet,” was introduced in 2014.
Jack Daniels asked VIP Products to stop selling the toy, according to court documents.
VIP Products then sued Jack Daniels U.S. District Court for the District of Arizona, seeking a ruling that its product did not constitute copyright infringement. Jack Daniels filed a countersuit which was granted, while the court denied VIP Products’ motion.
The back of the toy carries a disclaimer that reads: “This product is not affiliated with Jack Daniel Distillery.”
In its petition, Jack Daniels cited other cases where parody products caused confusion among customers, including “marijuana-infused” candy products that mimic the packaging of popular candies and cookies.
One example was a parody of Nestle’s Double Stuf Oreos which were labeled “Double Stuf Stoneos.” The petition claims that children were hospitalized because they could not tell the difference and ate the candy.
“This case involves the serious subject of alcohol, intended for adult consumption, and the not-so-serious subjects of dog toys and poop,” a reply to the Supreme Court from Jack Daniels reads. “No one disputes that VIP is trying to be funny. But alcohol and toys don’t mix well, and the same is true for beverages and excrement.”
While the attorneys for Jack Daniels present the case with a level of humor, the decision will carry larger implications on protecting brand identity from parody. Jack Daniels claims that a decision against it would put brands with as much as a “century’s worth or brand identity” at risk.
A number of companies and trade groups have filed amicus briefs in the case, including Nike, Levi Strauss, Patagonia and the Campbell Soup Company — which each sided with Jack Daniels.
“Nike considers its Nike word trademark and Swoosh Design trademark to be among its most valuable and recognizable assets. Nike has registered these trademarks in almost 170 jurisdictions worldwide,” the amicus brief from Nike reads.
“Nike therefore has a vital interest in strong and well-functioning legal regimes for the protection of trademark and other intellectual property rights.”
Nike indicated that its primary concern in the Jack Daniels case was the Circuit Court’s use of a legal doctrine established by Rogers v. Grimaldi, another case argued in 1989, to determine when the Lanham Act applies to artistic works.
In the Rogers v. Grimaldi case — a dispute between actress and singer Ginger Rogers and Italian film producer Alberto Grimaldi — the Second Circuit court upheld a decision from a lower court which found Grimaldi not liable for emulating Rogers and Fred Astaire in the Federico Fellini film “Ginger and Fred.”
“The Ninth Circuit has vastly extended the reach of Rogers and applied that judicial gloss to ordinary consumer goods,” Nike said, noting that the so-called Rogers test has most often been applied to artistic works such as books and movies.
In its amicus brief, Campbell’s Soup said the legal doctrine established by Rogers requires the petitioner to show that the use of their trademark is not artistically relevant to the infringing work or that the use of it explicitly misleads consumers.
Campell’s Soup argued that the Rogers doctrine “has no basis in the Lanham Act’s text or the Constitution.”
“The First Amendment does not authorize the Ninth Circuit to rewrite the unambiguous language of that Act or to decide not to apply the law as written,” Campbell’s Soup argued.
“When a defendant’s commercial use of another’s mark causes significant consumer confusion, a decision to impose trademark infringement liability under the Lanham Act clearly comports with the First Amendment.”
Patagonia and Levi Strauss said in a joint amicus brief said that the decision by the Ninth Circuit court and other similar cases adds a “mammoth loophole” to the Lanham Act and poses “a substantial threat to the viability of brands the public has come to trust.”
Recent trademark, likeness and copyright cases have landed on the side of the party using another’s likeness. Late last week, a federal judge dismissed a copyright case over the use of late Supreme Court Justice Ruth Bader Ginsburg‘s likeness from a photograph being used by an artist. The judge decided in favor of the artist against the photography company that owned the copyright to the image.