SCOTUS takes up Jack Daniel’s parody clash
Justices to chew over ‘Bad Spaniels Silly Squeaker’ dog toy | Free expression and parody at issue | TM owners facing “mass confusion” claims the whiskey maker.
The US Supreme Court has agreed to hear Jack Daniel’s bid to overturn a decision that a parody dog toy doesn’t infringe the distiller’s trademarks.
On Monday, November 21, the US’s highest court confirmed that it would hear an appeal against the US Court of Appeals for the Ninth Circuit’s ruling that the ‘ Bad Spaniels Silly Squeaker’, a parody dog toy sold by VIP Products, could be protected from trademark infringement claims on the grounds of free expression.
VIP Products’ toy resembles a bottle of the distiller’s Old No. 7 Black Label Tennessee Whiskey. It replaces “Old No. 7 Tennessee Sour Mash Whiskey” with “Old No. 2 on your Tennessee Carpet”, and “40% ALC. BY VOL. (80 PROOF)” with “43% POO BY VOL.” and “100% SMELLY”.
Back in 2014, Jack Daniel’s sued VIP Products at the US District Court for the District of Arizona.
The Arizona court sided with Jack Daniel’s, finding that VIP had infringed the brand’s trademarks, and issued an injunction against the further manufacture and sale of the Bad Spaniels toys.
However, the Ninth Circuit reversed the judgment on appeal, concluding that the Bad Spaniels toy, “although surely not the equivalent of the ‘Mona Lisa’, is an expressive work”, meaning that it is protected under the First Amendment.
It added that the toy used humour in a noncommercial context and it was “thus excluded from dilution liability” as protected by the First Amendment.
On remand, the US District Court for the District of Arizona subsequently entered judgment on remand.
At the time, the Arizona court “lamented” that the Ninth Circuit’s Lanham Act’s likelihood-of-confusion test “excuses nearly any use less than slapping another’s trademark on your own work and calling it your own”.
Last year, the Supreme Court rejected a request by Jack Daniel’s to hear its appeal.
VIP submitted a Brief in Opposition in October 2022, asking SCOTUS to deny the Ninth Circuit’s petition for Jack Daniel's writ of certiorari in August this year.
However, that petition was granted earlier this week.
According to the distiller, the Ninth Circuit’s decision “guts Jack Daniel’s ability to protect its brand and paves the way for companies like respondent to unleash mass confusion in the marketplace”.
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