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Whiskey titan prevails over poop-themed dog toys at Supreme Court

The justices didn't see the humor in a poop-themed joke at the expense of Jack Daniel's. 

WASHINGTON (CN) — Jack Daniel's persuaded the Supreme Court on Thursday to send a novelty toymaker to the dog house for trademark violations. 

“This case is about dog toys and Whiskey, two items seldom appearing in the same sentence,” Justice Elena Kagan wrote in the court’s unanimous ruling

The narrow ruling says the Ninth Circuit went too far in shielding a maker of dog toys from trademark infringement claims. What the opinion does not decide is if the toy infringed on Jack Daniel’s trademark. That question is instead left for the lower court taking up the next battle over the toys.

Tennessee-based Jack Daniel’s initiated the case almost a decade ago after a company called VIP Products began marketing a dog toy called Bad Spaniels Silly Squeaker. In not-so-veiled parody of the whiskey giant's famous “Old No. 7 Brand,” the squeak toy touts the “Old No. 2 on your Tennessee carpet” and a content of “43% Poo by Vol.” The “100% Smelly” toy is also identically shaped like the Old No. 7 bottle. Jack Daniel’s claims the joke not only fell flat but created confusion around the iconic brand. 

“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.” 

VIP claims Jack Daniel’s suit attempts to muzzle speech protected under the First Amendment. 

“‘Bad Spaniels’ is a pretend trademark for a pretend product — there is no bottle of ‘43% POO BY VOL.’ or anything else,” Bennett Evan Cooper, an attorney with Dickinson Wright representing VIP, wrote in their brief (emphasis in original). “The dog toy is a plastic medium for expressing the parodic message. People buy the artistic expression, not the fictional product.” 

Though a federal judge initially rejected VIP’s First Amendment arguments, a unanimous panel on the Ninth Circuit reversed, sending the case back to the district court. When VIP prevailed on remand and again at the appeals court, Jack Daniel’s brought the case to the Supreme Court. The justices heard arguments in the case in March. 

The ruling does not alter the test set out in Roger v. Grimaldi, which says that claims must be dismissed unless the trademark owner can prove that the allegedly infringing product lacks artistic relevance or is misleading to the source of the original. The court says this test should not apply in this case. 

“Without deciding whether Rogers has merit in other contexts, we hold that it does not when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer’s own goods,” Kagan wrote. 

Kagan says the dog toys are derived from Jack Daniel’s trademark in that way, but that the expressive content of the dog toys also merits consideration. 

“Beyond source designation, VIP uses the marks at issue in an effort to ‘parody’ or ‘make fun’ of Jack Daniel’s,” the Obama appointee wrote. “And that kind of message matters in assessing confusion because consumers are not so likely to think that the maker of a mocked product is itself doing the mocking.” 

There are exclusions in the Lanham Act for noncommercial use of trademarks. While acknowledging this exclusion, Kagan said the Ninth Circuit’s interpretation was too broad by including every parody or humorous commentary. 

“The expansive view of the ‘noncommercial use’ exclusion effectively nullifies Congress’s express limit on the fair-use exclusion for parody, etc,” Kagan wrote. 

While the ruling wasn't an all-out win for Jack Daniel's, trademark experts said brands would be pleased with the court's direction.

"The Court’s decision gives a potentially narrower birth to those that use another party’s mark — even if using that other party’s trademark is done for the purpose of allegedly 'poking fun at' or otherwise commenting on the 'senior user’s' trademark or business," J. Michael Keyes, an attorney with Dorsey & Whitney, said in a statement. "This will be an appreciated result for established, mature brands that need to fend off other users and copyists in the marketplace."

Keyes said it is also not a total loss for VIP.

"Although it does not enjoy the sweeping First Amendment protection given to it by the Ninth Circuit, VIP will still have an opportunity to argue to the lower court that its use of Bad Spaniels is not likely to cause confusion in the marketplace," Keyes said.

Attorneys for VIP and Jack Daniel's responded to requests for comment following the ruling.  

Follow @KelseyReichmann
Categories / Appeals, Business, Consumers, Entertainment

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