Last week, famous Tennessee whiskey maker Jack Daniel’s persuaded the U.S. Supreme Court to let its trademark case continue. Jack Daniel’s had sued a dog toy maker called VIP Products over a toy called Bad Spaniels. It argued that the toy illegally infringed on Jack Daniel’s trademarks.
The Bad Spaniels toy resembles a Jack Daniel’s bottle, although it has an image of a spaniel. The words on the toy also echo the label on the bottle. While the bottle states that it contains 40 percent alcohol by volume, the toy playfully states that it contains 43 percent poo by volume, adding that it is 100 percent smelly. VIP Products also parodied the phrase “Old No. 7 Tennessee Sour Mash Whiskey” with a comic reference to “The Old No. 2 on Your Tennessee Carpet.”
Jack Daniel’s argued that the Bad Spaniels toy infringed on its trademark rights because it was likely to confuse consumers. In other words, consumers might think that the whiskey maker was somehow responsible for the dog toy. (This is the main standard for proving infringement under federal trademark law.) The federal trial court reviewing the case agreed. It ordered VIP Products to stop selling the dog toys.
However, the Ninth Circuit reversed on appeal. It found that the First Amendment free speech rights of VIP Products should receive strong protection in this context. The Ninth Circuit ruled that Jack Daniel’s needed to show that the use of its trademarks on the dog toys was not artistically relevant to the toys or explicitly misled consumers about the source or content of the toys. When the case returned to the trial court, it ruled for VIP Products under this more demanding standard.
The Ninth Circuit affirmed when Jack Daniel’s appealed, but eventually the case reached the Supreme Court. Justice Elena Kagan wrote for a unanimous Court in reversing the Ninth Circuit. She found that the First Amendment did not dispose of the case. As Kagan put it, “when the accused infringer has used a trademark to designate the source of its own goods,…that kind of use falls within the heartland of trademark law and does not receive special First Amendment protection.” The opinion thus marked a victory not only for Jack Daniel’s but also for trademark holders in general, bolstering the value of this type of intellectual property.
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