US Supreme Court to Hear Case Involving Parody Dog Toys

The US Supreme Court recently agreed to hear a trademark case involving a maker of squeaky dog toys and Jack Daniel’s whiskey.

The toy at issue, sold by VIP Products LLC, is called the “Bad Spaniels Silly Squeaker” and it looks something like a bottle of Jack Daniel’s whiskey.

The maker of the toy contends that it’s a humorous parody allowed under the First Amendment to the US Constitution.

Jack Daniel’s argues that that toy violates its trademark rights and tarnishes its brand.

The whiskey bottle has the words "Old No. 7 brand" and "Tennessee Sour Mash Whiskey." The toy says, "The Old No. 2 on Your Tennessee Carpet."

The whiskey bottle says that it is 40% alcohol by volume. The toy says it's "43% Poo by Vol." and "100% Smelly."

As the Free Speech Center notes,

The toy is part of a line of VIP Products called Silly Squeakers that mimic liquor, beer, wine and soda bottles. They include Mountain Drool, which parodies Mountain Dew, and Heini Sniff'n, which parodies Heineken. A court in 2008 barred the company from selling its Budweiser parody, ButtWiper.

After Jack Daniel’s Properties, Inc. demanded that VIP cease selling the toy, VIP sought a declaration that the toy didn’t infringe Jack Daniel’s trademark rights or that Jack Daniel’s trade dress and bottle design were not entitled to trademark protection.

The district court found for Jack Daniel’s on the issues of aesthetic functionality and distinctiveness of its designs. The court also found that VIP’s use of the Jack Daniel’s trademarks and trade dress to sell poop-themed dog toys was likely to confuse consumers, infringe Jack Daniel’s marks, and tarnish Jack Daniel’s reputation.

However, the Ninth Circuit held that VIP’s First Amendment interest in using Jack Daniel’s trademarks on funny dog toys conferred special protection from infringement claims and, according to Jack Daniel’s, rendered VIP’s dog toys “noncommercial” and thus exempt from dilution-by-tarnishment claims.

15 U.S.C. § 1125(a)(1) (Section 43(a)(1) of the Lanham Act) provides:

Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

“Dilution by tarnishment” is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.

However, the following things aren’t actionable as dilution by tarnishment:

(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with—

• • advertising or promotion that permits consumers to compare goods or services; or
  • identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

(B) All forms of news reporting and news commentary.

(C) Any noncommercial use of a mark.

The Ninth Circuit noted that when “artistic expression is at issue,” the general likelihood-of-confusion test “fails to account for the full weight of the public’s interest in free expression.”

A work need not be the “expressive equal of Anna Karenina or Citizen Kane” to satisfy this requirement, said the court. For example,

We recently had “little difficulty” concluding that greeting cards, which combined the trademarked phrases “Honey Badger Don’t Care” and “Honey Badger Don’t Give a S - - -” alongside announcements of events such as Halloween and a birthday, were “expressive works” entitled to First Amendment protection. … Even if the cards did not show great “creative artistry,” they were protected under the First Amendment because the cards “convey[ed] a humorous message through the juxtaposition of an event of some significance—a birthday, Halloween, an election—with the honey badger’s aggressive assertion of apathy.”

Thus, concluded the court, “the Bad Spaniels dog toy, although surely not the equivalent of the Mona Lisa, is an expressive work.”

The court also cited a Fourth Circuit decision that held that “Chewy Vuiton” dog toys which “loosely resemble[d]” small Louis Vuitton handbags were “successful parodies of LVM handbags and the LVM marks and trade dress” and therefore did not infringe the LVM trademark.

Jack Daniel’s argued:

The Ninth Circuit’s infringement holding unjustifiably transforms humor into a get-of-out-the-Lanham-Act-free card. To be sure, everyone likes a good joke. But VIP’s profit-motivated “joke” confuses consumers by taking advantage of Jack Daniel’s hard-earned goodwill. The likelihood-of-confusion test already reconciles the competing First Amendment interests of mark holders and infringers; the Ninth Circuit’s test unjustifiably protects even intentionally misleading trademark use and elevates the infringer’s supposed free-speech interest above the mark holder’s.

Major companies included the outdoor brand Patagonia, the maker of Campbell Soups, and Levi Strauss Jeans urged the Supreme Court to take the case.

In a similar case decades ago, a federal judge ordered Topps Chewing Gum Inc. to stop producing Garbage Pail Kids stickers while he considered whether they violated the copyright of the Cabbage Patch Kids dolls.

In that case, as the New York Times reported, the judge cited the “fine line between parody and piracy,'' said the stickers were ''an attempt to make money.''

That case eventually settled out of court after Topps agreed to change the appearance of the Garbage Pail Kids characters and its logo design.

The case now before the Supreme Court is Jack Daniel’s Properties Inc. v. VIP Products LLC.

Arguments in the case are expected in the spring of 2023.