Supreme Court sides with Jack Daniel's in trademark battle over poop-themed dog toys

The Supreme Court sided with Jack Daniels and against a pet company selling poop themed dog toys in the shape of the brand's iconic whiskey bottle on Thursday, in a trademark dispute that attracted the attention of the nation’s most recognized brands.

Jack Daniel's Properties Inc, owned by Brown-Forman Corp, argued that the toy, which resembles the distiller's widely recognized black-label whiskey bottle but replaces the label with 'Bad Spaniels', could confuse consumers about who created the product and potentially tarnish the company name. 

The Arizona based dog toy company, 'VIP Products,' defended themselves, claiming the toy is a 'parody,' and qualifies as an 'expressive work.' which is protected by the US Constitution's First Amendment and entitled to free speech under the law. 

The whiskey maker in return said that there is a likelihood of confusion, meaning the poop themed product violated trademark law. 

In a unanimous 9-1 decision, the Supreme Court ruled against VIP Products, and rejected the ruling from a federal appeals court that had backed the dog toy company and sent the case back to a lower court for additional review. 

The product remains on shelves, until a decision is made at a district court level, which according to some experts, might be more difficult than it seems - if consumers are aware the product is a parody and not affiliated with the whiskey brand. 

VIP Products who makes whiskey shaped poo-themed dog toys, is at the center of a trademark dispute that the US Supreme Court ruled against on Thursday in a case that could redefine how the judiciary applies constitutional free speech rights to trademark law 

A dog toy called Bad Spaniels, shaped like a Jack Daniel's whiskey bottle will remain on shelves, until a decision is made at a district court level

Justice Elena Kagan, who authored the decision, said that VIP's alleged infringement of the Jack Daniel's trademark 'falls within the heartland of trademark law, and does not receive special First Amendment protection.'  

The Lanham Act, is the law which prohibits using a trademark in a way that is likely to cause confusion about its origin, and Jack Daniels claimed the dog toy likely confused consumers and therefore infringed on their copyright. 

'We hold only that it is not appropriate when the accused infringer has used a trademark to designate the source of its own goods — in other words, has used a trademark as a trademark,' Kagan wrote. 

The Supreme Court said lower courts must now consider whether VIP Products' dog toys look too similar to the iconic Jack Daniels bottle, causing confusion for consumers. 

'A parody must 'conjure up' 'enough original to make the object of its critical wit recognizable,'' Kagan wrote. 'Yet to succeed, the parody must also create contrasts, so that its message of ridicule or pointed humor comes clear.' 

'And once that is done (if that is done), a parody is not often likely to create confusion. Self-deprecation is one thing; self-mockery far less ordinary,' she added.

Supporters on both side have been vocal about where they stand on this issue. 

Justice Elena Kagan (pictured) authored the vote said that VIP's alleged infringement of the Jack Daniel's trademark does not receive special First Amendment protection 

In an unanimous vote the high court wiped away a lower court ruling and sent the case back to the lower courts 

Well-known brands, including Campbell Soup Co., Nike Inc., and Levi Strauss & Co., backed Jack Daniel's and filed briefs claiming the appeals court's interpretation of the law threatened trademark protections that shield the value of iconic brands.

While free speech advocates, such as the Electronic Frontier Foundation, filed briefs backing VIP, citing the importance of freely making a joke. 

The chewy toy, features poop gags, one in which displays the phrase 'Old No. 2' in reference to 'Old No. 7' label on the whiskey bottles. Another says 'the Old No. 2, on your Tennessee Carpet' in reference to the 'Old No. 7 Tennessee Sour Mash Whiskey' main label featured on the whiskey bottles.

References to alcohol content on a Jack Daniel's bottle, '40% ALC. BY VOL. (80 PROOF),' became '43% POO BY VOL.' and '100% SMELLY.' 

'The parody is to make fun of marks that take themselves seriously,' Bennett Cooper, who represented VIP Products and asserted their dog toys were works of artistic expression subject to free-speech protections earlier this year, as lower courts have found. 

Dr. Alex Simonson, a survey expert with 30 years of experience conducting trademark infringement surveys, said that while the court didn't allow the parody product to claim the first amendment protection, they also didn't say that the toy could not be sold.

'The court didn't accord the parody special first amendment protection but the court did not opine that the parody product infringes,' said Simonson, president of survey research firm 'Simonson Associates.' 

That decision will be determined by a likelihood of confusion analysis at the district court level, he said. 

'That is to be determined by whether or not Jack Daniels can show a likelihood of confusion and that may be harder than it seems if consumers of the toys are aware that it's a parody and neither sourced from Jack Daniels nor affiliated or authorized by Jack Daniels,' he added. 

As of now, the poop toy can be sold - until and if a showing of likelihood of confusion' by makers of Jack Daniels. The toy is for sale online on sites such as Walmart and Amazon, among others. 

The San Francisco-based 9th US Circuit Court of Appeals in 2020 ruled in favor of VIP Products on two separate grounds. 

The 9th Circuit said the Bad Spaniels toy was an 'expressive work' and thus potentially shielded under the First Amendment from Jack Daniel's trademark infringement claim.

On this point, the 9th Circuit returned the case for further proceedings to a federal judge in Arizona with instructions to apply a legal test stemming from a landmark 1989 trademark dispute between actress Ginger Rogers and film director Federico Fellini. 

The judge ruled for VIP Products after applying the so-called 'Rogers test,' which lets artists lawfully use another's trademark when doing so has artistic relevance to their work and would not explicitly mislead consumers about its source.

The 9th Circuit also ruled that VIP Product's use of the Jack Daniel's trademark was noncommercial because it was used not only to sell dog toys but also 'to convey a humorous message,' and thus had not tarnished the distiller's distinctive mark.

President Joe Biden's administration supports Jack Daniel's appeal. A ruling is expected by the end of June.