April 2023 Business Litigation Update
On March 22, the U.S. Supreme Court heard oral arguments in a case involving whisky, a dog toy, and trademark infringement, and it could have far-reaching implications as the Justices consider whether a parody of a well-recognized brand is subject to trademark infringement claims.
The case – Jack Daniel’s Properties, Inc. v. VIP Products, Inc., Docket No. 22-148 – began when the dog toy manufacturer, VIP Products, created a chew toy that was designed to look like a bottle of Jack Daniel’s whiskey. Instead of “Jack Daniel’s” the label on the chew toy is: “Bad Spaniels” spelled out in similar fonts and design elements as an original bottle of the whiskey, including the signature black label and white text.
In place of the “Old No. 7 Brand” design that appears on Jack Daniel’s bottles, however, the chew toy has an attempted joke about a dog dropping “the old No. 2 on your Tennessee carpet.”
Jack Daniel’s parent company, Brown-Forman, did not find the “Bad Spaniels” spoof amusing, and sued VIP Products for trademark infringement, alleging that the dog toy diluted the distinctive brand image of Jack Daniel’s, created confusion among consumers (seriously?), and damaged the company’s reputation. The trial court ruled in favor of Jack Daniel’s on the trademark infringement and dilution claims, barring VIP from manufacturing their “Bad Spaniel” product. However, the Ninth Circuit Court of Appeals reversed, and now the case is in the hands of the U.S. Supreme Court.
So, why does a dispute over a whisky bottle design and a dog toy matter? Because at the root of this case is VIP’s argument that its dog toy is a parody or a spoof, and is, therefore, unlikely to create any confusion among consumers or dilute the well-known brand. This does seem valid.
VIP also argues that parodies do not work unless they incorporate elements from a famous brand in order to “mock” it, essentially contending that products poking fun at a brand constitute protected speech and are, therefore, not subject to trademark infringement.
Interestingly, a quick search on amazon.com reveals numerous dog toys for sale that are parodies of well-known brands – Barkweiser (Budweiser), Sniff (Jiff), Dr. Pooper (Dr. Pepper), and Pup Claw (White Claw), just to name a few.
The Justices had many questions for Jack Daniel’s and VIP’s lawyers about the intersection of free speech and trademark laws involving commercial products, although Justice Kagan wondered how anyone could find the “Bad Spaniel’s” toy even remotely funny.
Some commentators hope that the Court’s decision in this case will help to clarify the extent to which a commercial parody acquires First Amendment protections.
By the end of the oral argument, it wasn’t very clear how the Court might rule, so we will have to wait for the Court’s final opinion, which is expected to be issued later this year.