The justices have agreed to hear a trademark dispute with First Amendment overtones involving a dog toy’s bathroom humor and a distinctive whiskey bottle.
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Trademark cases generally turn on whether the public is likely to be confused about a product’s source.
WASHINGTON — The next frontier in First Amendment law at the Supreme Court involves a trademark dispute over a chew toy for dogs shaped like a liquor bottle.
The justices agreed last month to decide the fate of the Bad Spaniels Silly Squeaker dog toy, which looks a lot like a bottle of Jack Daniel’s but with, as an appeals court judge put it, “lighthearted, dog-related alterations.”
The jokes are scatological. The words “Old No. 7 Brand Tennessee Sour Mash Whiskey” on the bottle are replaced on the toy by “the Old No. 2, on your Tennessee carpet.” Where Jack Daniel’s says its product is 40 percent alcohol by volume, Bad Spaniels’s is said to be “43 percent poo.”
A tag attached to the toy says it is “not affiliated with Jack Daniel Distillery.”
Trademark cases generally turn on whether the public is likely to be confused about a product’s source. In the Bad Spaniels case, a unanimous three-judge panel of the Court of Appeals for the Ninth Circuit, in San Francisco, said the First Amendment requires a more demanding test when the challenged product is expressing an idea or point of view.
“The Bad Spaniels dog toy, although surely not the equivalent of the Mona Lisa, is an expressive work” that uses irreverent humor and wordplay to poke fun at Jack Daniel’s, Judge Andrew D. Hurwitz wrote for the panel.
In a petition seeking Supreme Court review, lawyers for Jack Daniel’s questioned the appeals court’s reliance on a “purported First Amendment interest in making poop-themed jokes at Jack Daniel’s expense.”
“To be sure,” the brief added, “everyone likes a good joke.” But this one, the brief said, “confuses consumers by taking advantage of Jack Daniel’s hard-earned good will.”
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Lawyers for the toy’s manufacturer, VIP Products, said it was following “in the playful parodic tradition that has ranged over a half-century from Topps’s Wacky Packages trading cards through ‘Weird Al’ Yankovic.”
The trading cards, for fake products that mimicked real ones, like Ratz Crackers, Jolly Mean Giant and Gulp Oil, were enormously popular in the 1970s, for a time outselling Topps baseball cards. “Yet the world did not end,” VIP Products told the justices.
Lawyers for Jack Daniel’s responded that “the test for this court’s review is not Armageddon.” The Bad Spaniels toy, they wrote, “harms Jack Daniel’s brand, including by associating whiskey with excrement and toys that appeal to children.”
Several trade associations for producers and importers of alcoholic beverages told the justices in a brief supporting Jack Daniel’s that the appeals court’s ruling had undermined their efforts to promote responsible drinking.
“Indeed,” the brief said, “the Ninth Circuit’s rule would appear to protect infringing activity that takes the form of jokes about underage drinking, excessive consumption or drunk driving. From children’s toys to drinking game kits to automobile accessories, those making infringing products need only employ humor to escape liability for trademark infringement.”
Lawyers for VIP Products called that idea far-fetched.
“VIP sells a dog toy called ‘Bad Spaniels Silly Squeaker’ with a picture of a dog and no reference to alcohol, and the only people who would understand what was being parodied are people already familiar with whiskey,” the company’s brief said. “No one — not a child, not a dog — is going to be harmed by VIP’s parody.”
Lawyers for Jack Daniel’s said that response was flippant.
“Children need not drink whiskey to know that they enjoy playing with dog toys using Jack Daniel’s marks,” they wrote. “When they see a real Jack Daniel’s bottle, they might be more inclined to consume its contents.”
The American Intellectual Property Law Association, in a brief urging the court to grant review in the case, proposed a middle ground. The First Amendment has a role to play in trademark infringement suits, the group’s lawyers wrote, but only if they involve artistic works. Chew toys are utilitarian commercial products, their brief said, and do not qualify.
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The Supreme Court is likely to hear arguments in the case, Jack Daniel’s Properties v. VIP Products, No. 22-148, in March and issue a decision by June.
At least one other court has rejected a trademark infringement claim against a dog toy, though without bringing the First Amendment into it.
In 2007, the Court of Appeals for the Fourth Circuit, in Richmond, Va., ruled in favor of a company called Haute Diggity Dog, saying it was entitled to sell Chewy Vuiton dog toys that looked like miniature Louis Vuitton handbags.
Judge Paul V. Niemeyer, writing for a unanimous three-judge panel, said the toy “immediately conveys a joking and amusing parody.”
“The furry little ‘Chewy Vuiton’ imitation, as something to be chewed by a dog, pokes fun at the elegance and expensiveness of a Louis Vuitton handbag, which must not be chewed by a dog,” he wrote, adding: “The dog toy irreverently presents haute couture as an object for casual canine destruction. The satire is unmistakable.”
On the other hand, a federal judge in Missouri in 2008 issued a preliminary injunction against a VIP dog toy, this one based on Budweiser’s beer bottles. “VIP’s parody argument does not defeat the likelihood of confusion,” the judge ruled.
Rebecca Tushnet, a law professor at Harvard, said humor should count in the chew toy case now before the justices.
“VIP’s Bad Spaniels dog toys are unambiguously a joke, one that Jack Daniel’s doesn’t appreciate,” she wrote in a friend-of-the-court brief filed in an earlier phase of the case. “But trademark law does not — and cannot constitutionally — give Jack Daniel’s the right to prevent others from making a joke at their expense, even if the vehicle for the joke is a dog toy.”
Source: nytimes.com
