WASHINGTON – The Supreme Court gave whiskey maker Jack Daniel’s a reason to raise a glass on Thursday, giving the company a new chance to win a trademark dispute with the makers of the Bad Spaniels dog toy.
Announcing the court’s unanimous decision, Judge Elena Kagan was in an unusually playful mood. At one point during the courtroom summary of the opinion, Kagan held up a toy that squeaks and mimics a brand-name whiskey bottle.
Kagan said the lower court’s reasoning was flawed when it ruled in favor of the makers of the rubber chew toy. The court did not decide whether the toy maker violated trademark law, but instead remanded the case for further proceedings.
“This is a case about dog toys and whiskey, two subjects that rarely appear in the same sentence,” Kagan wrote in a brief for the court. At another point, Kagan asked readers to “Remember what the bottle looks like (or better yet, get the bottle from where you keep the liquor; it’s probably there)” before inserting a color image of it.
Arizona-based VIP Products has been selling its Bad Spaniels toy since 2014. It’s part of the Silly Squeakers line of chew toys that mimic liquor, beer, wine and soda bottles. These include Mountain Drool, which parodies Mountain Dew, and Heini Sniff’n, which parodies Heineken beer.
While Jack Daniel’s bottles are labeled “Old No. 7 brand” and “Tennessee Sour Mash Whiskey”, the toy reads: “The Old No. 2 on Your Tennessee Carpet.” The original bottle states that the alcohol content is 40%. The parody features a dog’s face and says it’s “43% Poo by Vol.” and “100% Smelly”.
The packaging of the toy, which retails for about $20, reads in small print, “This product is not affiliated with Jack Daniel’s Distillery.”
Jack Daniel’s, based in Lynchburg, Tennessee, was not amused. His lawyers argued that the toy misled customers, profited from “the hard-earned goodwill of Jack Daniel’s” and associated its “whiskey with excrement”.
At the heart of the case is the Lanham Act, the nation’s primary federal trademark law. It prohibits the use of a trademark in a manner “likely to cause confusion … as to the origin, sponsorship, or endorsement of … goods.”
However, the lower court never reached the question of consumer deception because it said the toy was a “distinct piece” that conveyed a humorous message and therefore had to be evaluated under a different test. Kagan said that was a mistake and that “the only question in this case going forward is whether the marks of bad spaniels are likely to cause confusion.”
Kagan also said the lower court erred in its analysis of Jack Daniel’s lawsuit against the toy company for associating “its whiskey with less savory substances.”
The opinion was one of four handed down by the court on Thursday, including a 5-4 decision in favor of black voters in Alabama in a congressional redistricting case. The case was closely watched to weaken the landmark Voting Rights Act.
Right: Jack Daniel’s Properties, Inc. v. VIP Products LLC, 22-148.
