Supreme Court gets the scoop on doggy toy, whiskey parody case
Stephen Sacra, the owner of a thriving business that makes pet toys, was eating dinner with his wife at the bar of a restaurant about 10 years ago when he saw a liquor bottle that inspired what would become the newest offering for his company’s Silly Squeakers line.
Those are dog chew toys shaped like liquor bottles but with parody names and themes, such as Heinie Sniff’n (Heineken beer), BarkParty (Bacardi rum) and Doggie Walker (Johnnie Walker scotch whisky).
Sacra telephoned his product designer and said little more than “Bad Spaniels. You figure it out.”
Eleanor Phillips, the designer at VIP Products, said in a court deposition that Sacra was typically coy when passing along his initial ideas to see if she could discern what the intended parody was.
“It took me some time to figure it out,” Phillips testified but she went to her liquor cabinet and pulled out a bottle of Jack Daniel’s Old No. 7 Tennessee whiskey. Playing on the iconic liquor brand and its distinctive label and square-shaped bottle, she soon developed the idea for the Bad Spaniels chew toy.
“I thought it was a fun play on Old No. 7 from the Jack Daniel’s bottle, to change it to Old No. 2 referring to the dog,” Phillips said. Adding the referencing to “on your Tennessee carpet” completed what is, undeniably, a joke about dog poop.
“The intended message for the Bad Spaniels parody toy, as the same with all of ours, is just saying, the world around you is constantly advertising to you … And we are coming back and saying, ‘look, you can’t be so serious in this world all the time,’” Sacra testified in court in 2017. “You need to be able to sit back and laugh at yourself.”
Executives at Jack Daniel’s, whose whiskey was first sold under that name in 1875, were not amused. They requested that VIP Products stop selling the dog toy, leading to a major trademark case that the U.S. Supreme Court will take up March 22.
“Jack Daniel’s loves dogs and appreciates a good joke as much as anyone,” the company says in a high court brief. “But Jack Daniel’s likes its customers even more and doesn’t want them confused or associating its fine whiskey with dog poop.”
Some evidence of consumer confusion
The case of Jack Daniel’s Properties Inc. v. VIP Products holds implications far beyond squeaky pet toys. The central question is whether a humorous use of another company’s trademark on a commercial product should receive heightened protection under the First Amendment or should simply be subject to an analysis about the “likelihood of confusion” under the Lanham Act, the principal federal statute on trademarks.
“While this case is in the context of trademarks and parodies, it is really about freedom of speech and the freedom to mock,” says Bennett Evan Cooper, a Phoenix lawyer who will argue for VIP Products. “Iconic brands that make themselves the subject of public conversation also expose themselves to mockery.”
Phoenix-based VIP Products is the second-largest dog toy company in the nation and has gross annual revenues of approximately $15 million, according to court papers, with many of the 500-plus products in its catalog just squeaky or stuffed items besides the beverage parodies. The company sued Jack Daniel’s first, to get declaratory relief and to secure a forum in its home state of Arizona. The Tennessee liquor company countersued for trademark infringement and dilution. It sought an injunction barring production and distribution of the Bad Spaniels toy and related relief, but not damages.
A federal district court in 2018 held that there was no First Amendment protection for VIP’s parody, so the case was governed by the Lanham Act’s likelihood-of-confusion test. After a bench trial, the district judge ruled for Jack Daniel’s, including crediting the opinion of the company’s expert that 29 percent of potential customers were likely to be confused about Bad Spaniels being affiliated with the liquor brand.
The 9th Circuit U.S. Court of Appeals in 2020 reversed in part, holding that the dog toy triggered heightened First Amendment scrutiny and it was “an expressive work entitled to First Amendment protection” and the toy “communicates a humorous message” through word play.
The court cited an influential 1989 decision by the 2nd Circuit U.S. Court of Appeals stemming from a lawsuit the musical star Ginger Rogers had brought against a movie producer over a film called Ginger and Fred. Rogers claimed the title misled the public into thinking she endorsed the film.
The 2nd Circuit, in Rogers v. Grimaldi, expressed concern that “overextension of Lanham Act restrictions in the area of titles might intrude on First Amendment values” and went on to hold that the statute “should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.”
Several other federal courts of appeals have since adopted some version of the Rogers test.
On remand, the district court granted summary judgment to VIP Products on Jack Daniel’s trademark infringement claim, observing that it would be “nearly impossible” for any trademark holder to prevail under the 9th Circuit’s version of the Rogers test short of “slapping another’s trademark on your own work and calling it your own.”
‘Businesses … would do well to take a joke’
In the Supreme Court, Jack Daniel’s (which declined an interview request through its lawyer), argues that the Lanham Act “does not impose a heightened standard for ‘humorous’ or ‘expressive’ works.” It argues for throwing out the Rogers test.
Jack Daniel’s has numerous allies, mostly from the world of big business, who have a rather humorless take on the case.
A coalition of distilled spirits, beer and wine industry groups filed an amicus brief arguing that upholding the 9th Circuit ruling “would gut the alcohol beverage industry’s ability to promote responsible advertising that does not harm children.”
“Even allegedly ‘humorous’ knock-offs can confuse consumers as to what messaging and products well-known alcohol beverage brands endorse—and thus undermine the industry’s credibility,” says the brief.
Athletic shoe and apparel company Nike Inc., seeking to help defend its own trademarks, says in a brief that “not every humorous use of another’s trademark is a parody” worthy of protection.
The U.S. Chamber of Commerce and the National Association of Manufacturers filed another brief supporting Jack Daniel’s that was a little more good-humored.
“To be sure, everyone likes a good joke,” it says, and “businesses, like individuals, would do well to take a joke.” But “slapping a joke” on a consumer product does not make it noncommercial for First Amendment purposes, it says.
“This is an important issue,” says Gregory G. Garre, a former U.S. solicitor general under President George W. Bush and a current partner at Latham & Watkins who wrote the brief for the U.S. Chamber and NAM. “Much of the value these companies have is tied up in their trademarks and their goodwill,” he says.
If the Supreme Court were to back the 9th Circuit and give a wide scope to the Rogers rule, “that would unleash the floodgates” of commercial products playing off well-known trademarks, Garre says.
A parody that works on two levels
VIP Products has support from somewhat more ragtag groups of professors, First Amendment advocates and artists.
A group of 30 trademark law professors argues in a brief that the Lanham Act was reaching more First Amendment expression until the Rogers decision helped balance “the (attenuated) interests of trademark owners in not being made fun of against the strong speech interests of those who want to talk about famous brands.”
“In this case, there is no plausible argument that anyone is buying the Silly Squeaker toy thinking it is a bottle of Jack Daniel’s,” one signer of that brief, Mark P. McKenna, a law professor at the University of California, Los Angeles, and the faculty co-director of the UCLA Institute for Technology, Law & Policy, says.
Cooper, the lawyer representing VIP Products, emphasized that the Bad Spaniels toy is unquestionably a parody that involves “a pretend trademark on a pretend bottle …”
The parody operates on two levels, he says, skewering Jack Daniel’s sense of cultural self-importance, including the personification of “Jack” as a friend in more than one country music song and spoofing dog owners’ relationship with their pets.
“You’ve got a lot of very famous companies that don’t like being made fun of,” Cooper says.
He says the parodic point is best encapsulated by a line of poetry that he included his brief, by the Brazilian poet, lyricist and diplomat Vinicius de Moraes (and translated from Portuguese): “Whiskey is man’s best friend, it’s a dog in a bottle.”
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