19 October 2022TrademarksSarah Speight

‘Bad Spaniels’ dog toy maker pushes against Jack Daniel’s SCOTUS bid

Parody dog chew at the centre of decision against the whiskey maker | Amicus curie from at least six brands and TM groups, including Campbell Soup, Levis, and INTA.

The maker of a ‘Bad Spaniels’ parody dog toy has urged the US Supreme Court (SCOTUS) not to review an earlier finding by the Ninth Circuit that the toy does not infringe trademarks owned by Jack Daniel’s.

VIP Products submitted a Brief in Opposition this week, October 17, asking SCOTUS to deny the Ninth Circuit’s petition for a writ of certiorari in August this year.

The toy maker maintains that the dog chew’s “playful parody” is a protected expressive work, and asks whether the Rogers test applies to an artistic parody of the Jack Daniel’s whiskey bottle to determine trademark infringement, and whether the Trademark Dilution Revision Act’s statutory exception for “noncommercial use” should apply to an artistic parody of the whiskey bottle.

This follows a request by the whiskey maker that SCOTUS revisits the case after having its petition denied by the court in January 2021.

Amicus curie submissions

The case has garnered interest from brands and trademark groups, with VIP Products’ submission to the court joining half-a-dozen amicus curie, including from The Campbell Soup Company, Levi Strauss & Co and the International Trademark Association.

The US Court of Appeals for the Ninth Circuit granted the petition on August 5, arguing that the toy used humour in a noncommercial context and is “thus excluded from dilution liability” as protected by the First Amendment.

The US District Court for the District of Arizona subsequently entered judgment on remand, described as “begrudgingly” by the Ninth Circuit.

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”.

It urged Jack Daniel’s to “seek relief” from the Arizona court, which the Ninth Circuit affirmed but encouraged Jack Daniel’s to appeal to the highest court again.

‘Silly Squeaker’ dog chews

Arizona-based VIP has made several “Silly Squeaker” dog toys parodying beverage bottles, such as the “ButtWiper” dog toy mimicking Budweiser; the “Tailfleas” toy after Baileys; and “Panta” after Fanta.

The company launched its “Bad Spaniels” toy in 2013, parodying Jack Daniel’s Tennessee Whiskey bottle. The following year VIP received a cease-and-desist letter from Jack Daniel’s, accusing it of infringing the trademark whiskey bottle shape, fonts and colour scheme.

VIP subsequently sued the whiskey maker, claiming non-infringement and non-dilution, arguing that Jack Daniels was not entitled to trademark protection for its trade dress and bottle design.

The Tennessee-based whiskey maker counterclaimed, alleging trademark infringement and dilution by tarnishment.

The Arizona court granted both claims, rejecting VIP's defence of nominative fair use and First Amendment exclusions, and enjoined any future sales of the toy.

VIP appealed this ruling to the 9th Circuit, arguing that the Jack Daniels bottle lacked distinctiveness and that the bottle-related trademark rights should be cancelled.

The toy maker also argued that its use of Jack Daniel’s marks constituted nominative fair use and was exempt from liability.

In an opinion of March 2020, the court rejected both of these arguments but affirmed the district court’s summary judgment in favour of Jack Daniel’s on the issues of aesthetic functionality and distinctiveness; affirmed the judgment as to the validity of the whiskey maker’s registered mark; reversed the judgment on the issue of dilution; and vacated the judgment after trial on the issue of infringement. The case was remanded for further proceedings.

A matter of appropriation

The Bad Spaniels toy is described in court documents as appropriating Jack Daniel’s marks and trade dress “in virtually every way”.

The toy replaces “Jack Daniel’s” with “Bad Spaniels” and the image of a spaniel. It replaces “Old No. 7 Tennessee Sour Mash Whiskey” with “Old No. 2 on your Tennessee Carpet.”

It also replaces “40% ALC. BY VOL. (80 PROOF)” with “43% POO BY VOL.” and “100% SMELLY.” The square bottle shape, ribbed neck, arched lettering, filigreed border, colour scheme, font styles, and size are nearly identical.

The back of the label states in small text: “This product is not affiliated with Jack Daniel Distillery.”

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23 June 2023   The landmark Jack Daniel’s case involving a dog toy leaves questions over the Rogers test and could see a shift in infringement standards, says Mark Stallion of Greensfelder.
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