WASHINGTON (CN) — Next week the Supreme Court will review a suit from a famous whiskey maker to decide if poop-themed dog toys mimicking the brand are free speech or a trademark violation.
Jack Daniel’s is asking the Supreme Court to hold a dog toy manufacturer accountable for trademark infringement on its famous “Old No. 7 Brand.” VIP Products' dog toy called the Bad Spaniels Silly Squeaker is advertised as “The Old No. 2 on your Tennessee carpet,” containing “43% Poo by Vol.” The “100% Smelly” toy is even shaped like the iconic whiskey bottle.
The parody of its famous brand did not impress the whiskey maker, instead setting up a lawsuit that has made its way to the high court where the justices will balance upholding intellectual property rights while preserving free speech.
“People spend billions of dollars in this country to develop their brands and we need to make sure they can reliably do that, and if they don't want their high-quality whiskey associated with poop, you've got to have an answer for that,” Elizabeth Brannen, a partner at Stris & Maher specializing in intellectual property disputes, said during a preview of the case.
Bad Spaniels goes further than just a joke, Jack Daniel’s alleges.
“Jack Daniel’s loves dogs and appreciates a good joke as much as anyone,” the brand's attorney Lisa Blatt with Williams & Connolly wrote. “But Jack Daniel’s likes its customers even more, and doesn’t want them confused or associating its fine whiskey with dog poop.”
Jack Daniel’s claims VIP is using the company’s hard-earned goodwill to sell products and argues the parody will create an unwanted connection for its brand.
“In other words, poop humor has its time and place, particularly for toddlers and young children,” Blatt wrote. “But Jack Daniel’s 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.” (Emphasis in original.)
VIP Products argues parody is the price of becoming an icon like Jack Daniel’s.
“Freedom of speech begins with freedom to mock,” Bennett Evan Cooper, an attorney with Dickinson Wright representing VIP, wrote in their brief. “Objects of mockery, satire, or parody — government officials, artists, celebrities, iconic brands — may bristle at negativity or loss of control over public discourse, but they are the price of fame.”
The dog toymaker claims Jack Daniel’s is attempting to “muzzle” its playful parody, and the First Amendment needs to protect parody. VIP claims it cannot be in violation of Jack Daniel’s trademark because there isn’t actually a Bad Spaniels product.
“‘Bad Spaniels’ is a pretend trademark for a pretend product — there is no bottle of ‘43% POO BY VOL.’ or anything else,” Cooper wrote (emphasis in original). “The dog toy is a plastic medium for expressing the parodic message. People buy the artistic expression, not the fictional product.”
Jack Daniel’s sued VIP in 2014, seeking to halt all sales of the Ban Spaniels toy. VIP responded by requesting a declaratory judgment that its toy was a parody of the iconic whiskey bottle, not an infringement of trademark rights.
A federal judge ruled in favor of Jack Daniel's, rejecting VIP’s First Amendment arguments, because the toy was sold as a commercial product. VIP was also banned from selling the toy. Reversing, a unanimous panel on the Ninth Circuit remanded on the grounds that VIP was entitled to First Amendment protections. VIP won round two at the district court, and the Ninth Circuit affirmed. The Supreme Court agreed to hear the case in November.
The question before the justices is what test should be used to determine trademark infringement. The option utilized by the Ninth Circuit flows from Rogers v. Grimaldi. The Rogers test protects artistically expressive use of trademarks through the First Amendment.
Jack Daniel’s is not a fan of this option, claiming it would create a trademark free-for-all in the name of humor.
“Under those rulings, anyone could use a famous mark to sell sex toys, drinking games, or marijuana bongs, while misleading customers and destroying billions of dollars in goodwill — all in the name of just having fun,” Blatt wrote.
An alternative test the court could implement is the likelihood-of-confusion test. This multifactor test is used to determine if trademark use could possibly be confused and involves nine steps to determine if an infringement has occurred.
VIP opposes the likelihood-of-confusion test because it claims it would create costly litigation for artists.
“In the case of a parody, you do need to make it somewhat similar so that people realize what you're parroting,” said Andrew Michaels, an assistant professor of law at the University of Houston Law Center, during a preview of the case. “So although that would normally weigh in favor of likelihood of confusion, they argue that basically, the factors are awkward at best and in the context of parody.”
It’s likely that the justices will use a multitude of hypotheticals in a case like this, but experts say it's not clear how they could rule since the justices most interested in these issues have recently left the court.
“It's going to be a very interesting oral argument to watch, I think, because there's going to be clearly some jokes and things of that sort that will be made, but we're going to start seeing various justices eventually developing their jurisprudence on intellectual property issues,” said Adam Mossoff, a professor of law at the Antonin Scalia School of Law at George Mason University, during a preview of the case. “Who’s going to be the next Breyer and Ginsburg on the court?”
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