The Supreme Court ruled on Thursday that the First Amendment did not protect a chew toy for dogs resembling a bottle of Jack Daniel’s from a lawsuit claiming trademark infringement.
The toy, the Bad Spaniels Silly Squeaker, has the shape and other distinctive features of a bottle of Jack Daniel’s but with, as an appeals court judge put it, “lighthearted, dog-related alterations.”
The words “Old No. 7 Brand Tennessee Sour Mash Whiskey” on the bottle are replaced on the toy by “the Old No. 2, on your Tennessee carpet.” Where Jack Daniel’s says its product is 40 percent alcohol by volume, Bad Spaniels’ is said to be “43 percent poo.”
A tag attached to the toy says it is “not affiliated with Jack Daniel Distillery.”
Justice Elena Kagan, writing for a unanimous court, seemed amused by the dispute. “This case is about dog toys and whiskey,” she wrote, “two items seldom appearing in the same sentence.”
She added that the characteristics of the whiskey bottle were familiar to almost everyone.
“A bottle of Jack Daniel’s — no, Jack Daniel’s Old No. 7 Tennessee Sour Mash Whiskey — boasts a fair number of trademarks,” she wrote. “Recall what the bottle looks like (or better yet, retrieve a bottle from wherever you keep liquor; it’s probably there).”
After reproducing a color photograph of the bottle, she continued: “‘Jack Daniel’s’ is a registered trademark, as is ‘Old No. 7.’ So too the arched Jack Daniel’s logo. And the stylized label with filigree (i.e., twirling white lines). Finally, what might be thought of as the platform for all those marks — the whiskey’s distinctive square bottle — is itself registered.”
Trademark cases generally turn on whether the public is likely to be confused about a product’s source. In the Bad Spaniels case, a unanimous three-judge panel of the Court of Appeals for the Ninth Circuit, in San Francisco, said the First Amendment required a more demanding test when the challenged product was expressing an idea or point of view.
“The Bad Spaniels dog toy, although surely not the equivalent of the Mona Lisa, is an expressive work” that uses irreverent humor and wordplay to poke fun at Jack Daniel’s, Judge Andrew D. Hurwitz wrote for the panel.
But Justice Kagan said there was no role for “any threshold First Amendment filter” in the case. Rather, she wrote, “the infringement claim here rises or falls on likelihood of confusion.”
That is the classic inquiry in trademark cases. But Justice Kagan, in returning the case to lower courts to analyze it, said the chew toy’s mockery of the liquor bottle had to figure in the analysis, as it was not obvious that consumers would think that Jack Daniel’s was responsible for a toy poking fun at itself.
Justice Samuel A. Alito Jr. made a similar point when the case was argued in March, imagining a pitch meeting with a Jack Daniel’s executive.
“Somebody in Jack Daniel’s comes to the C.E.O. and says: ‘I have a great idea for a product that we’re going to produce. It’s going to be a dog toy, and it’s going to have a label that looks a lot like our label, and it’s going to have a name that looks a lot like our name, Bad Spaniels, and what’s going to be purportedly in this dog toy is dog urine,’” Justice Alito said, suggesting that consumers were unlikely to think the chew toy was produced or endorsed by the distiller.
Justice Kagan echoed the point in her opinion. “Consumers,” she wrote, “are not so likely to think that the maker of a mocked product is itself doing the mocking.” She added, “Self-deprecation is one thing; self-mockery far less ordinary.”
In a concurring opinion, Justice Sonia Sotomayor, joined by Justice Alito, cautioned lower courts against being too credulous in assessing surveys, which are commonplace in trademark litigation, “that purport to show that consumers are likely to be confused by an allegedly infringing product.”
Those surveys, she wrote, “may reflect a mistaken belief among some survey respondents that all parodies require permission from the owner of the parodied mark.”
In a Supreme Court brief in the case, Jack Daniel’s Properties v. VIP Products, No. 22-148, lawyers for the distiller wrote that “everyone likes a good joke.” But the chew toy, the brief said, “confuses consumers by taking advantage of Jack Daniel’s hard-earned good will.”
Lawyers for the toy’s manufacturer, VIP Products, said it was following “in the playful parodic tradition that has ranged over a half-century from Topps’s Wacky Packages trading cards through ‘Weird Al’ Yankovic.”
The trading cards, for fake products that mimicked real ones, like Ratz Crackers, Jolly Mean Giant and Gulp Oil, were enormously popular in the 1970s, for a time outselling Topps baseball cards. “Yet the world did not end,” VIP Products told the justices.