OAN Brooke Mallory
UPDATED 5:15 PM – Wednesday, March 22, 2023
The Supreme Court discussed on Wednesday the complexities of a federal trademark law in a case involving a dog toy with a “poop theme” that looks like a Jack Daniel’s bottle.
The justices occasionally laughed as they discussed how much protection should be given to satirists who steal trademarks they don’t own.
A “Bad Spaniels Silly Squeaker” toy made by VIP Products that resembles Jack Daniel’s bottles is the merchandise being questioned by the court. The famous distiller filed a lawsuit against the manufacturer of the toy, alleging that it violated federal trademark laws.
Federal trademark laws often focus on how likely it is for a consumer to mistake an alleged infringer with a product made by the original (legitimate) owner.
After back-and-forth arguments, one justice acknowledged that she didn’t understand the humor or punchline that VIP Products was peddling.
“What is there to it? What is the parody here? Because maybe I just have no sense of humor. But what’s the parody?” asked Justice Elena Kagan.
Justice Clarence Thomas laughed as Kagan continued to enumerate a variety of trademarks that the firm ridicules, like ‘Mountain Drool,” “Doggie Walker,” “Canine Cola,” and “Dos Perros.”
Justice Samuel Alito questioned the likelihood that a rational person would think that Jack Daniel’s endorsed the dog toy or a hypothetical toy that made fun of the fact that it contained “dog urine.”
“So a reasonable person would not believe Jack Daniel’s had approved this?” Alito asked Lisa Blatt, the attorney representing Jack Daniel’s.
“I think if you’re selling urine, you’re probably going to win on a motion to dismiss, but you’re probably also violating some state law,” Blatt responded.
“Oh no, you’re not selling urine. It’s exactly this toy, which purportedly contains some sort of dog excrement or urine. Well, just showing how confused I was suggests that I would be your perfect consumer,” Blatt continued.
Regardless of whether the jokes were intended, some of the justices expressed skepticism toward the distillery, whose lawyers were asking the court to reject the heightened level of review that an appeals court typically applies when it decides in favor of something.
“I have some hesitation doing away with the Rogers Test,” Justice Sonia Sotomayor said regarding the court-created criteria used to examine whether a possible infringement of a trademark in non-commercial contexts is protected by the constitution.
Alito nodded his head in agreement.
“You know, there is a text that says that Congress shall make no law infringing on the freedom of speech. That’s a text that takes precedence over the Lanham Act, and you said there are no constitutional issues,” he added, referencing the trademark legislation that is the subject of the conflict.
Judge Ketanji Brown Jackson joined the chorus of dissenters when she declared that she was “concerned about harming artists” in the event that the court agreed with Jack Daniel’s and made a ruling that practically forbid the unlawful use of trademarks in creative branding.
The case comes down to the rights of a well-known trademark owner being in conflict with the First Amendment rights of a business that wants to utilize similar branding to market a satirical product.
The “Bad Spaniels Silly Squeaker” toy by VIP resembles a Jack Daniel’s bottle in its general shape, and the label’s typography and color on the plastic bottle are extremely similar to those of the original glass bottle version.
The VIP brand copies Jack Daniel’s “Old No. 7 Brand Tennessee Sour Mash Whiskey” to say “The Old No. 2 On Your Tennessee Carpet,” a reference to dog poop. They also changed the liquor bottle’s “40% ALC. BY VOL. (80 PROOF)” to “43% POO BY VOL.” and “100% SMELLY.”
The item is “not linked with Jack Daniel’s Distillery,” according to a tag that comes attached to the plastic toy bottle.
However, the tag was not enough to keep Jack Daniel’s from suing the company to take the plastic toy bottle completely off the market.
The distiller maintains that VIP violates federal trademark laws and that the toy, especially the references to dog excrement, damages its reputation because it could confuse consumers into thinking the product belongs to the “oldest registered distillery in the U.S.”
“To be sure, everyone likes a good joke… But VIP’s profit-motivated ‘joke’ confuses consumers by taking advantage of Jack Daniel’s hard-earned goodwill,” Jack Daniel’s lawyers wrote in their petition.
The justices’ decision may remove certain trademark protections by allowing organizations to legitimately utilize registered trademarks that do not belong to them as long as they do it in a way that conveys satire.
A district court decided that the toy did indeed violate Jack Daniel’s trademark, and it was found in their favor. However, an appeals court later took the Rogers Test into consideration and sided with VIP Products.
The court ruled that because VIP’s use of the Jack Daniel’s brand was amusing and done for “expressive work,” it was protected by the First Amendment.
This case “deals with the very common thing of pitting somebody who has trademark rights—against another who is saying, ‘I’m entitled to (use those trademarks) under the First Amendment because it is parody. And I need to take enough of the trademark in order to make it funny. People have to get the joke,’” said D.C. trademark attorney Mark Sommers.
If the judges help clarify the line that exists between the First Amendment’s “right of expression” in this dilemma, then their decision could end up being monumental and even set precedents for future similar cases.
In court documents, Jack Daniel’s attorneys informed the judges that the appeals court decision “gives copycats free license to prey on unsuspecting consumers and trademark holders.”
They also cautioned that if the decision didn’t end in their favor, there could be an uptick in businesses utilizing trademarks they don’t own just to saturate the market with ostensibly low-quality goods.
“No one disputes that VIP is trying to be funny. But alcohol and toys don’t mix well, and the same is true for beverages and excrement… The next case could involve more troubling combinations—food and poison, cartoon characters and pornography, children’s toys and illegal drugs, and so on,” the distillery attorneys warned.
Nike and Levi Strauss & Co., among other well-known businesses, submitted court briefs in support of Jack Daniel’s.