Whiskey-a-no-no: dog toy cannot mimic Jack Daniel’s, US supreme court rules

The US supreme court on Thursday gave a boost to Jack Daniel’s in its trademark dispute with a dog accessory company that sold a parody chew toy resembling the distiller’s widely recognized black-label whiskey bottle.

The 9-0 decision written by Justice Elena Kagan, from the liberal wing of the bench, threw out a lower court’s ruling that the pun-laden Bad Spaniels vinyl chew toy sold by an Arizona company called VIP Products is an “expressive work” protected by the US constitution’s first amendment. Jack Daniel’s Properties Inc is owned by the Louisville, Kentucky-based Brown-Forman Corp.

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The dispute pitted the whiskey brand’s trademark rights against legal protections for creative expression – in this case a send-up by Phoenix-based VIP Products of Jack Daniel’s Old No 7 Tennessee whiskey bottle, featuring comical dog poop-themed changes like a label reading “the Old No 2, on your Tennessee Carpet”.

Kagan wrote, wryly: “This case is about dog toys and whiskey, two items seldom appearing in the same sentence.”

She emphasized that, while throwing out the lower court’s decision, the ruling from America’s highest court was narrow.

Lower courts had ruled in favor of VIP Products after applying what is called the Rogers test, which has allowed artists to lawfully use another’s trademark when doing so has artistic relevance to their work and would not explicitly mislead consumers about its source.

The test was crafted in a 1989 decision by the New York-based second US circuit court of appeals in a case brought by the Hollywood legend Ginger Rogers. The actor unsuccessfully sued to block the 1986 film Ginger and Fred from director Federico Fellini that referred to her famed dance partnership with Fred Astaire.

A lawyer for the Biden administration had urged the justices to discard the Rogers test in favor of the more-rigorous multi-factor test normally used in trademark-infringement cases, which looks squarely at whether the acts would be likely to cause marketplace confusion.

An appeals court ruled in 2020 in favor of VIP Products on two grounds. The ninth circuit found the Bad Spaniels toy was an “expressive work” shielded by the first amendment. It also ruled that VIP Product’s use of the Jack Daniel’s trademark was non-commercial 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.