The Supreme Court ruled unanimously Thursday that a dog toy mimicking the famous Jack Daniel’s whiskey bottle might have infringed — and damaged — the beverage company’s trademark.
The court’s 9-0 ruling tossed a judgment from the 9th U.S. Circuit Court of Appeals ruling in favor of the dog toy company. The federal appeals court had reasoned the dog toy product was a creative work parodying the whiskey bottle and therefore was protected by the First Amendment.
The high court, though, said the 9th Circuit conducted the wrong analysis, noting the real issue is whether a consumer could be confused between the two products.
“The only question in this suit going forward is whether the Bad Spaniels marks are likely to cause confusion,” wrote Justice Elena Kagan for the court, which sent the issue back to the lower court for further proceedings.
Federal law, specifically the Lanham Act, holds people liable for using another’s symbol, name, device or word in commercial transactions.
The legislation also has an exception for the fair use of trademarks when parodying a product or company.
At issue in the case was a dog toy produced by VIP Products that looks similar to a Jack Daniel’s square whiskey bottle that read, “Bad Spaniels The Old No. 2 On Your Tennessee Carpet.”
Jack Daniel’s bottles read, “Jack Daniel’s Old No. 7 Tennessee Sour Mash Whiskey.”
Jack Daniel’s Properties sued the dog toy producer, claiming it was infringing on its trademark and diluting its reputation by associating it with dog poop.
The trial court ruled in the whiskey company’s favor, reasoning the product could confuse customers. The 9th Circuit reversed that, saying the toy was expressive work protected by the First Amendment.
The high court’s move reverses the 9th Circuit’s decision and is a victory for Jack Daniel’s in its trademark battle.
“The court’s decision gives a potentially narrower birth to those that use another party’s mark — even if using that other party’s trademark is done for the purpose of allegedly poking fun at or otherwise commenting on the senior user’s trademark or business. This will be an appreciated result for established, mature brands that need to fend off other users and copyists in the marketplace,” said J. Michael Keyes, a lawyer from Dorsey & Whitney.
Then again, VIP Products can still argue in lower court that the products are not likely to be confused by consumers.
The case is Jack Daniel’s Properties Inc. v. VIP Products.
• Alex Swoyer can be reached at aswoyer@washingtontimes.com.
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