The U.S. 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 whisky bottle.
The 9-0 decision authored by liberal Justice Elena Kagan threw out a lower court’s ruling that the pun-laden “Bad Spaniels” vinyl chew toy sold by VIP Products LLC is an “expressive work” protected by the U.S. Constitution’s First Amendment. Jack Daniel’s Properties Inc is owned by Louisville, Kentucky-based Brown-Forman Corp.
The dispute pitted the whisky 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 whisky bottle featuring comical dog poop-themed changes like a label reading “the Old No. 2, on your Tennessee Carpet.”
“This case is about dog toys and whisky, two items seldom appearing in the same sentence,” Kagan wrote in the ruling, emphasizing that, while throwing out the lower court’s decision, the decision was narrow.
Lower courts had ruled in favour 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 2nd U.S. Circuit Court of Appeals in a case brought by Hollywood legend Ginger Rogers. The actress unsuccessfully sued to block the 1986 film “Ginger and Fred” from director Federico Fellini that referred to her famed dance partnership with actor Fred Astaire.
Kagan wrote that the 9th Circuit erred in applying the test in this case, concluding that “it is not appropriate when the accused infringer has used a trademark to designate the source of its own goods – in other words, has used a trademark as a trademark. That kind of use falls within the heartland of trademark law, and does not receive special First Amendment protection.”
Kagan added that “few cases would even get to the likelihood-of-confusion inquiry if all expressive content triggered the Rogers filter.”
A lawyer for President Joe Biden’s administration had urged the justices to discard the Rogers test in favour of the more-rigorous multi-factor test normally used in trademark-infringement cases, which looks squarely at whether the acts would likely cause marketplace confusion.
The San Francisco-based 9th U.S. Circuit Court of Appeals in 2020 ruled in favour of VIP Products on two grounds. The 9th 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 noncommercial 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.