THE HILL
- 03/22/23
A bottle of Jack Daniel’s Tennessee Whiskey is displayed next to a Bad Spaniels dog toy in Arlington, Va., Sunday, Nov. 20, 2022. Jack Daniel’s has asked the Supreme Court justices to hear its case against the manufacturer of the toy. (AP Photo/Jessica Gresko)
“Debbie Does Dallas.” Shirts with drunk donkeys and elephants. Toilet humor.
The Supreme Court on Wednesday got a rare dose of humor as the justices took under consideration a request by Jack Daniel’s to hold a company liable under a federal trademark law for producing poop-themed dog toys that spoof its whiskey bottles.
The company, VIP Products LLC, replaced the famed “Jack Daniel’s” typography with “Bad Spaniels,” also swapping “Old No. 7 brand” and “Tennessee Sour Mash Whiskey” with “The Old No. 2 on your Tennessee Carpet” as they parodied the famed brand into a chewy dog toy.
The dispute brought a seldom-seen lighthearted atmosphere to the courtroom during oral arguments, with the justices cracking jokes and posing entertaining hypotheticals as they weighed if humor gives the toys heightened First Amendment protections that block the trademark claims.
“The parody is to make fun of marks that take themselves seriously,” argued Bennett Cooper, who represented VIP Products and asserted their dog toys were works of artistic expression subject to free-speech protections, as lower courts have found.
“I mean you say that, but you make fun of a lot of marks: Doggie Walker, Dos Perros, Smella R-Crotches, Canine Cola, Mountain Drool. Are all of these companies taking themselves too seriously?” Justice Elena Kagan responded.
Sitting a few feet away, Justice Clarence Thomas chuckled as Kagan ran through the company’s product list, which parody alcoholic and soft drink brands like Dos Equis, Coca-Cola and Mountain Dew.
Trademark cases typically involve an analysis of whether consumers are likely to be confused by a product’s use of a protected mark.
But VIP Products wants the justices to uphold a ruling that found the company wasn’t liable under the “Rogers test.”
Many lower courts have adopted the test, which balances trademark claims against works of creative expression with First Amendment protections. But the high court has never endorsed it, making the case the justices’ first major confrontation with the Rogers test.
The justices are also grappling with the lower court’s ruling that VIP Products is protected from Jack Daniel’s trademark dilution claims because the use of the mark was noncommercial. The court had ruled that the company not only was selling a dog toy, it was also conveying a “humorous message.”
Jack Daniel’s, which was backed by the Justice Department, contended that upholding the lower ruling would render the nation’s primary federal trademark law “virtually useless,” listing off in court filings several examples the company says would tarnish popular brands.
Lisa Blatt, who represented the whisky maker, referenced the movie “Debbie Does Dallas” and a past case involving Barbie dolls.
“Could any reasonable person think that Jack Daniels had approved this use of the mark?” asked Justice Samuel Alito, who said he was concerned about the First Amendment implications of Jack Daniel’s position.
Blatt indicated yes before suggesting Alito had “hindsight bias.”
“It’s just a little rich for people who are at your level to say that you know what the average purchasing public thinks about all kinds of female products that you don’t know anything about or dog toys that you might not know anything about,” Blatt said.
Alito jokingly quipped back, “I had a dog, I know something about dogs,”
Justice Ketanji Brown Jackson expressed concerns the other way, stating, “people can be totally confused, but we then just scream First Amendment and we get out of Lanham Act liability. And I don’t see that in the statute, and that’s what I’m worried about.”
Blatt throughout her argument stressed the importance of using consumer survey data to gauge consumer confusion in trademark cases. Jack Daniel’s survey expert in earlier proceedings determined that 29 percent of potential customers were likely to be confused about the company’s affiliation with “Bad Spaniels.”
Cooper, representing the dog-toy maker, later shot back that “the First Amendment is not a game show where the result is, ‘survey says I’m confused, stop talking.’”
A bottle of Jack Daniel’s Tennessee Whiskey is displayed next to a Bad Spaniels dog toy in Arlington, Va., Sunday, Nov. 20, 2022. Jack Daniel’s has asked the Supreme Court justices to hear its case against the manufacturer of the toy. (AP Photo/Jessica Gresko)
“Debbie Does Dallas.” Shirts with drunk donkeys and elephants. Toilet humor.
The Supreme Court on Wednesday got a rare dose of humor as the justices took under consideration a request by Jack Daniel’s to hold a company liable under a federal trademark law for producing poop-themed dog toys that spoof its whiskey bottles.
The company, VIP Products LLC, replaced the famed “Jack Daniel’s” typography with “Bad Spaniels,” also swapping “Old No. 7 brand” and “Tennessee Sour Mash Whiskey” with “The Old No. 2 on your Tennessee Carpet” as they parodied the famed brand into a chewy dog toy.
The dispute brought a seldom-seen lighthearted atmosphere to the courtroom during oral arguments, with the justices cracking jokes and posing entertaining hypotheticals as they weighed if humor gives the toys heightened First Amendment protections that block the trademark claims.
“The parody is to make fun of marks that take themselves seriously,” argued Bennett Cooper, who represented VIP Products and asserted their dog toys were works of artistic expression subject to free-speech protections, as lower courts have found.
“I mean you say that, but you make fun of a lot of marks: Doggie Walker, Dos Perros, Smella R-Crotches, Canine Cola, Mountain Drool. Are all of these companies taking themselves too seriously?” Justice Elena Kagan responded.
Sitting a few feet away, Justice Clarence Thomas chuckled as Kagan ran through the company’s product list, which parody alcoholic and soft drink brands like Dos Equis, Coca-Cola and Mountain Dew.
Trademark cases typically involve an analysis of whether consumers are likely to be confused by a product’s use of a protected mark.
But VIP Products wants the justices to uphold a ruling that found the company wasn’t liable under the “Rogers test.”
Many lower courts have adopted the test, which balances trademark claims against works of creative expression with First Amendment protections. But the high court has never endorsed it, making the case the justices’ first major confrontation with the Rogers test.
The justices are also grappling with the lower court’s ruling that VIP Products is protected from Jack Daniel’s trademark dilution claims because the use of the mark was noncommercial. The court had ruled that the company not only was selling a dog toy, it was also conveying a “humorous message.”
Jack Daniel’s, which was backed by the Justice Department, contended that upholding the lower ruling would render the nation’s primary federal trademark law “virtually useless,” listing off in court filings several examples the company says would tarnish popular brands.
Lisa Blatt, who represented the whisky maker, referenced the movie “Debbie Does Dallas” and a past case involving Barbie dolls.
“Could any reasonable person think that Jack Daniels had approved this use of the mark?” asked Justice Samuel Alito, who said he was concerned about the First Amendment implications of Jack Daniel’s position.
Blatt indicated yes before suggesting Alito had “hindsight bias.”
“It’s just a little rich for people who are at your level to say that you know what the average purchasing public thinks about all kinds of female products that you don’t know anything about or dog toys that you might not know anything about,” Blatt said.
Alito jokingly quipped back, “I had a dog, I know something about dogs,”
Justice Ketanji Brown Jackson expressed concerns the other way, stating, “people can be totally confused, but we then just scream First Amendment and we get out of Lanham Act liability. And I don’t see that in the statute, and that’s what I’m worried about.”
Blatt throughout her argument stressed the importance of using consumer survey data to gauge consumer confusion in trademark cases. Jack Daniel’s survey expert in earlier proceedings determined that 29 percent of potential customers were likely to be confused about the company’s affiliation with “Bad Spaniels.”
Cooper, representing the dog-toy maker, later shot back that “the First Amendment is not a game show where the result is, ‘survey says I’m confused, stop talking.’”
Justice Sotomayor questioned Blatt if a political party armed with survey data could take someone to trial for selling t-shirts on Amazon that show a drunk donkey or elephant — which are associated with the Democratic and Republican parties — accompanied by the slogan, “it’s time to sober up America.”
“That’s funny, your example. Gonna give you that,” Blatt responded.
A decision in the case, Jack Daniels Properties, Inc. v. VIP Products LLC, is expected by late June.
Supreme Court to hear Jack Daniels' trademark arguments with dog toy company
The Supreme Court will hear oral arguments Wednesday in a case between Jack Daniels and a dog toy company that sells a toy that parodies its iconic whiskey bottle.
In its petition, Jack Daniels cited other cases where parody products caused confusion among customers, including "marijuana-infused" candy products that mimic the packaging of popular candies and cookies.
One example was a parody of Nestle's Double Stuf Oreos which were labeled "Double Stuf Stoneos." The petition claims that children were hospitalized because they could not tell the difference and ate the candy.
"This case involves the serious subject of alcohol, intended for adult consumption, and the not-so-serious subjects of dog toys and poop," a reply to the Supreme Court from Jack Daniels reads. "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."
While the attorneys for Jack Daniels present the case with a level of humor, the decision will carry larger implications on protecting brand identity from parody. Jack Daniels claims that a decision against it would put brands with as much as a "century's worth or brand identity" at risk.
A number of companies and trade groups have filed amicus briefs in the case, including Nike, Levi Strauss, Patagonia and the Campbell Soup Company -- which each sided with Jack Daniels.
"Nike considers its Nike word trademark and Swoosh Design trademark to be among its most valuable and recognizable assets. Nike has registered these trademarks in almost 170 jurisdictions worldwide," the amicus brief from Nike reads.
"Nike therefore has a vital interest in strong and well-functioning legal regimes for the protection of trademark and other intellectual property rights."
Nike indicated that its primary concern in the Jack Daniels case was the Circuit Court's use of a legal doctrine established by Rogers v. Grimaldi, another case argued in 1989, to determine when the Lanham Act applies to artistic works.
In the Rogers v. Grimaldi case -- a dispute between actress and singer Ginger Rogers and Italian film producer Alberto Grimaldi -- the Second Circuit court upheld a decision from a lower court which found Grimaldi not liable for emulating Rogers and Fred Astaire in the Federico Fellini film "Ginger and Fred."
"The Ninth Circuit has vastly extended the reach of Rogers and applied that judicial gloss to ordinary consumer goods," Nike said, noting that the so-called Rogers test has most often been applied to artistic works such as books and movies.
In its amicus brief, Campbell's Soup said the legal doctrine established by Rogers requires the petitioner to show that the use of their trademark is not artistically relevant to the infringing work or that the use of it explicitly misleads consumers.
Campell's Soup argued that the Rogers doctrine "has no basis in the Lanham Act's text or the Constitution."
"The First Amendment does not authorize the Ninth Circuit to rewrite the unambiguous language of that Act or to decide not to apply the law as written," Campbell's Soup argued.
"When a defendant's commercial use of another's mark causes significant consumer confusion, a decision to impose trademark infringement liability under the Lanham Act clearly comports with the First Amendment."
Patagonia and Levi Strauss said in a joint amicus brief said that the decision by the Ninth Circuit court and other similar cases adds a "mammoth loophole" to the Lanham Act and poses "a substantial threat to the viability of brands the public has come to trust."
Recent trademark, likeness and copyright cases have landed on the side of the party using another's likeness. Late last week, a federal judge dismissed a copyright case over the use of late Supreme Court Justice Ruth Bader Ginsburg's likeness from a photograph being used by an artist. The judge decided in favor of the artist against the photography company that owned the copyright to the image.
The Supreme Court will hear oral arguments Wednesday in a case between Jack Daniels and a dog toy company that sells a toy that parodies its iconic whiskey bottle.
Image courtesy of Wikimedia Commons
March 19 (UPI) -- The Supreme Court will hear oral arguments Wednesday in a case between Jack Daniels and a company that sells a dog toy that parodies its iconic whiskey bottle.
In a petition to the court, the marquee brand in Tennessee whiskey claims that VIP Products' dog toy damages the Jack Daniels brand and confuses its customer base, violating trademark law. The hearing comes after the U.S. Court of Appeals for the 9th Circuit landed on the side of the toymaker in 2020.
The district court said that VIP Products using the likeness of a Jack Daniels bottle to "sell poop-themed dog toys was likely to confuse consumers, infringed Jack Daniel's marks, and tarnished Jack Daniel's reputation" but ruled that VIP's parody bottle was granted special protection as expressive content under the First Amendment.
The toy in question, labeled "Bad Spaniels" and parodying Jack Daniels' "Old No. 7" with "Old No. 2 on Your Tennessee Carpet," was introduced in 2014.
Jack Daniels asked VIP Products to stop selling the toy, according to court documents.
VIP Products then sued Jack Daniels U.S. District Court for the District of Arizona, seeking a ruling that its product did not constitute copyright infringement. Jack Daniels filed a countersuit which was granted, while the court denied VIP Products' motion.
The back of the toy carries a disclaimer that reads: "This product is not affiliated with Jack Daniel Distillery."
March 19 (UPI) -- The Supreme Court will hear oral arguments Wednesday in a case between Jack Daniels and a company that sells a dog toy that parodies its iconic whiskey bottle.
In a petition to the court, the marquee brand in Tennessee whiskey claims that VIP Products' dog toy damages the Jack Daniels brand and confuses its customer base, violating trademark law. The hearing comes after the U.S. Court of Appeals for the 9th Circuit landed on the side of the toymaker in 2020.
The district court said that VIP Products using the likeness of a Jack Daniels bottle to "sell poop-themed dog toys was likely to confuse consumers, infringed Jack Daniel's marks, and tarnished Jack Daniel's reputation" but ruled that VIP's parody bottle was granted special protection as expressive content under the First Amendment.
The toy in question, labeled "Bad Spaniels" and parodying Jack Daniels' "Old No. 7" with "Old No. 2 on Your Tennessee Carpet," was introduced in 2014.
Jack Daniels asked VIP Products to stop selling the toy, according to court documents.
VIP Products then sued Jack Daniels U.S. District Court for the District of Arizona, seeking a ruling that its product did not constitute copyright infringement. Jack Daniels filed a countersuit which was granted, while the court denied VIP Products' motion.
The back of the toy carries a disclaimer that reads: "This product is not affiliated with Jack Daniel Distillery."
In its petition, Jack Daniels cited other cases where parody products caused confusion among customers, including "marijuana-infused" candy products that mimic the packaging of popular candies and cookies.
One example was a parody of Nestle's Double Stuf Oreos which were labeled "Double Stuf Stoneos." The petition claims that children were hospitalized because they could not tell the difference and ate the candy.
"This case involves the serious subject of alcohol, intended for adult consumption, and the not-so-serious subjects of dog toys and poop," a reply to the Supreme Court from Jack Daniels reads. "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."
While the attorneys for Jack Daniels present the case with a level of humor, the decision will carry larger implications on protecting brand identity from parody. Jack Daniels claims that a decision against it would put brands with as much as a "century's worth or brand identity" at risk.
A number of companies and trade groups have filed amicus briefs in the case, including Nike, Levi Strauss, Patagonia and the Campbell Soup Company -- which each sided with Jack Daniels.
"Nike considers its Nike word trademark and Swoosh Design trademark to be among its most valuable and recognizable assets. Nike has registered these trademarks in almost 170 jurisdictions worldwide," the amicus brief from Nike reads.
"Nike therefore has a vital interest in strong and well-functioning legal regimes for the protection of trademark and other intellectual property rights."
Nike indicated that its primary concern in the Jack Daniels case was the Circuit Court's use of a legal doctrine established by Rogers v. Grimaldi, another case argued in 1989, to determine when the Lanham Act applies to artistic works.
In the Rogers v. Grimaldi case -- a dispute between actress and singer Ginger Rogers and Italian film producer Alberto Grimaldi -- the Second Circuit court upheld a decision from a lower court which found Grimaldi not liable for emulating Rogers and Fred Astaire in the Federico Fellini film "Ginger and Fred."
"The Ninth Circuit has vastly extended the reach of Rogers and applied that judicial gloss to ordinary consumer goods," Nike said, noting that the so-called Rogers test has most often been applied to artistic works such as books and movies.
In its amicus brief, Campbell's Soup said the legal doctrine established by Rogers requires the petitioner to show that the use of their trademark is not artistically relevant to the infringing work or that the use of it explicitly misleads consumers.
Campell's Soup argued that the Rogers doctrine "has no basis in the Lanham Act's text or the Constitution."
"The First Amendment does not authorize the Ninth Circuit to rewrite the unambiguous language of that Act or to decide not to apply the law as written," Campbell's Soup argued.
"When a defendant's commercial use of another's mark causes significant consumer confusion, a decision to impose trademark infringement liability under the Lanham Act clearly comports with the First Amendment."
Patagonia and Levi Strauss said in a joint amicus brief said that the decision by the Ninth Circuit court and other similar cases adds a "mammoth loophole" to the Lanham Act and poses "a substantial threat to the viability of brands the public has come to trust."
Recent trademark, likeness and copyright cases have landed on the side of the party using another's likeness. Late last week, a federal judge dismissed a copyright case over the use of late Supreme Court Justice Ruth Bader Ginsburg's likeness from a photograph being used by an artist. The judge decided in favor of the artist against the photography company that owned the copyright to the image.
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