The US Supreme Court has ruled in favour of whiskey brand Jack Daniel’s in a trademark dispute with VIP Products over its Bad Spaniels chew toy, which parodies the drinks brand’s iconic bottle. The Arizona-based pet product manufacturer produces Bad Spaniels as part of its Silly Squeakers line of toys, which mimic liquor, wine and soda bottles. However, Jack Daniel’s parent company, Brown-Forman, argued that the Bad Spaniels chew toy profited from the distiller’s reputation and goodwill, diluting, weakening, and tarnishing its distinctive trademark.
Since 2014, VIP Products has been selling Bad Spaniels, the bottle-shaped chew toy which features a dog’s face and the inscription, “The Old No. 2 on Your Tennessee Carpet”, alongside “43% Poo by Vol” and “100% Smelly”. Following the case, Judge Elena Kagan of the US Supreme Court said the Lanham Act, which prohibits the use of a trademark in a way that could cause confusion, is the key issue going forward.
In 2018, a US appeals court ruled that Jack Daniel’s had not demonstrated that the toy had infringed on its trademark, leading Brown-Forman to petition the Supreme Court. In a unanimous decision, the high court sent the case back to a lower court for further review on Thursday, but did not rule on whether the First Amendment provided parodies with protection. Justice Elena Kagan wrote that an appeals court needed to decide whether the packaging could mislead customers that the toys are made “in collaboration with” the distiller.
The case pivoted on the “Rogers test,” which permits the use of another company’s trademark if it has “artistic relevance.” Jack Daniel’s argued that the dog toys were not “humorous” or “expressive,” and infringed on its trademark. Critics had accused the distiller of attempting to stifle free expression.
The US Supreme Court ruling means that the First Amendment does not protect the makers of a Jack Daniel’s-branded dog toy, parodying the whiskey’s bottle. While the decision in favor of Jack Daniel’s ultimately allows the company to revive a trademark lawsuit against the toy’s manufacturer, it has declined to dismiss the Rogers test used by the appeals court. The high court’s opinion prevents trademark holders from suing companies for parodying their logos on consumer goods.
The ruling will have an impact on all industries by delineating the scope of protection that trademark holders will have in the future. It’s worth noting that the line between a trademark infringement and a good parody is a fine one and will be determined on a case-by-case basis. Companies may find themselves caught in often-expensive legal battles, so may be less likely to take on smaller and less damaging infringements.
In conclusion, the legal battle between Jack Daniel’s and VIP Products has been ongoing for several years. The decision by the US Supreme Court offers clarity on proceedings and paves the way for the Jack Daniel’s brand to sue VIP Products in a lower court for trademark infringement. Trademark owners will find it helpful that the Supreme Court has ruled in favor of Jack Daniel’s, reaffirming the power of trademark protection in the United States.
