What began as a jest by VIP Products to design dog toys parodying well-known brands — most notably, Jack Daniel’s — ended in a whimper on June 8, 2023. Whether the company’s “Bad Spaniels” dog chew toy infringed on the trademark owned by the famous maker of Tennessee whiskey was front and center over the course of a prolonged legal battle. The toy company believed it was protected by the First Amendment, and after appealing a lower court’s ruling, Jack Daniel’s had its day in [the highest] court earlier this year. Less than three months later, Jack Daniel’s is emerging victorious in its lawsuit that made it all the way to the United States Supreme Court. The ruling has implications for a host of major brands that feel their own trademarks may have been violated by other companies who profit off their established reputations.
It all began in 2014 when Arizona-based VIP Products designed a new chew toy for pups. The controversy stirs from how closely the squeaky toy resembles the iconic Jack Daniel’s bottle of Tennessee whiskey. VIP Products is the second-largest manufacturer of dog toys in America and boasts a whole collection of parody products sold under their line Silly Squeakers.
VIP Products landed in the legal doghouse after creating its brownish-colored, square-shaped bottle toy. The merchandise is affixed with a familiar black label but contains the image of a spaniel dog. What’s more, it is emblazoned with font in a style a little too close to home for Jack Daniel’s taste. In lieu of the whiskey’s “Old No. 7” descriptor, the toy reads “The Old No. 2 on your Tennessee carpet.” It’s a playful attempt at potty humor. The toy further mimics the liquor bottle containing 40% alcohol by offering “43% POO BY VOL.” It also notes it is “100% SMELLY.”
Jack Daniel’s hounded the company to stop parodying its brand, arguing the toy risks the established reputation of the distillery. The Associated Press reports Lisa Blatt, an attorney for the distillery, submitted a court filing making clear why the whiskey company wants what it sees as the ultimate faux-paw, if you will, of VIP Products addressed. In it, Blatt writes, “Jack Daniel’s loves dogs and appreciates a good joke as much as anyone. But Jack Daniel’s likes its customers even more, and doesn’t want them confused or associating its fine whiskey with dog poop.”
The court cases … all of them
How it started
Jack Daniel’s brought suit against VIP Products, alleging the dog toy created confusion for consumers about the distillery’s brand. A district court agreed. Unhappy with the ruling, VIP Products appealed.
VIP Products’ appeal
The Ninth Circuit Court of Appeals sided with the toymaker. VIP Products contended its chew toy is protected under the First Amendment because it is a playful, obvious joke. In its defense, the toy company also includes a product label noting that they are not affiliated with Jack Daniel’s.
The Court believed the product stood up to the application of the Rogers test. In this instance, that means the toy is unlikely to be confused with the established whiskey brand. The Rogers test, a legal standard arising from a 1989 court case involving Ginger Rogers, “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 New York Times reported on the Court’s opinion, authored by Judge Andrew D. Hurwitz. Hurwitz wrote, “The Bad Spaniels dog toy, although surely not the equivalent of the Mona Lisa, is an expressive work.” He pointed out that the toy relies on humor and a creative take on a known product. Seems straightforward, right?
Jack Daniel’s day in the Supreme Court
Jack Daniel’s key argument is there is more than meets the eye in this case. The distillery pursued an appeal because it sells its own dog merchandise. When the case was heard by the Supreme Court in March, Jack Daniel’s attorney Lisa Blatt argued First Amendment protections were not applicable here. Blatt affirmed “Jack Daniel’s makes dog products and sells licensed merchandise, like hats and bar stools and what have you, in the same markets that Bad Spaniels was selling its dog toys.” This means VIP Products is crossing a line by selling to customers who may otherwise have purchased a whiskey-themed toy, if it existed, directly from Jack Daniel’s.
The Supreme Court ruling
On June 8, 2023, an opinion authored by Justice Elena Kagan was unleashed. In it, she details why the Supreme Court Justices ruled 9-0 in favor of Jack Daniel’s. The ruling affirms that VIP Products violated The Lanham Act, which is essentially the nation’s gold standard of trademark law.
This case differs from one, brought by Louis Vuitton, decided in 2007 in favor of Haute Diggity Dog. At odds was the sale of plush “Chewy Vuiton” dog toys. In that case, the parody items were priced to target a considerably different consumer base than the exponentially more expensive dog products manufactured by the luxury brand. Judge Paul Niemeyer wrote in his opinion, “The furry little ‘Chewy Vuiton’ imitation, as something to be chewed by a dog, pokes fun at the elegance and expensiveness of a Louis Vuitton handbag, which must not be chewed by a dog.” He continued with, “The dog toy irreverently presents haute couture as an object for casual canine destruction. The satire is unmistakable.” Given canine destruction is, rather unfortunately, something many readers of this site understand firsthand, we have no bones to pick with his argument.
Why this lawsuit matters
Prior to the ruling, many major brands wrote briefs in support of Jack Daniel’s. Arguably, this makes clear that the outcome of the case matters to their own bottom lines and established reputations. Nike submitted a brief stating, “Though defendants will often have an incentive to label it as such, not every humorous use of another’s trademark is a parody.”
Perhaps your pup is gnawing on a parody product as your eyes glaze over this text. After all, there is a reason why companies like VIP Products and Haute Diggity Dog create dog-sized versions of familiar brands dominating pop culture. Fido has no opinion of the corporations we embrace in mainstream society. Our love — or contempt — of brands is the motivation for spending hard-earned cheddar on toys most dogs only briefly enjoy. So long as there is a market for canine knockoffs, companies will continue to craft nearly-iconic chew toys. Going forward, they just have a very short leash, courtesy of the Supreme Court, from which to appease our furry companions.