On Wednesday, U.S. Supreme Court justices heard arguments in a case pitting trademark infringement against free speech. The case concerns a parody dog toy called “Bad Spaniels,” which looks very similar to a Jack Daniel’s whiskey bottle but replaces words and pictures on the label with dog jokes.
Phrases on the gag dog toy include “the Old No. 2 on your Tennessee Carpet,” “43% poo by vol.,” and “100% smelly.” Jack Daniel’s claims that the toy is infringing its trademark, causing consumer confusion, and tarnishing its reputation. The company that produced “Bad Spaniels,” VIP Products LLC, argues that the toy is a parody and is not infringing.
VIP Products LLC won in the lower court, which found that the product qualified as an expressive work protected by the Constitution’s First Amendment. The win was based on a rule called the “Rogers test,” from the case Rogers v. Grimaldi, between performer Ginger Rogers and the producers and distributors of the film “Ginger and Fred.” The film depicted the lives of two fictional characters who imitated Fred Astaire and Ginger Rogers in a cabaret dance routine, eventually reuniting 30 years later to reprise their act for an Italian television special. It was ultimately protected from Rogers’ claims because it was a work of artistic expression, its title being artistically relevant and not explicitly misleading.
Justice Samuel Alito questioned whether any reasonable person would think that Jack Daniel’s had approved the use of its mark by VIP Products, while Justice Ketanji Brown Jackson asked VIP Products whether the Rogers test was too forgiving to expressive works that cause consumer confusion. A Justice Department lawyer argued that the case should be decided using a multi-factor test usually employed in trademark infringement cases that tests the likelihood of consumer confusion.
Justice Elena Kagan questioned whether the case should be measured against the Rogers test at all, pointing out that the dog toy is a “standard commercial product,” not an artistic expression.
Additional Reading
U.S. Supreme Court chews on Jack Daniel’s fight against parody dog toy, Reuters (March 22, 2023)
Jack Daniel’s v. poop-themed dog toy in a trademark case at the Supreme Court, NPR (March 22, 2023)
Supreme Court chews on Jack Daniel’s dog toy dispute, AP News (March 23, 2023)
Trademark Infringement, Justia Intellectual Property Center
Image Credit: NewStart / Shutterstock.com
