The case, a trademark dispute, pitted Jack Daniel’s against Bad Spaniels Silly Squeakers, which looks similar the distiller’s distinctive vessel and adds potty humor.
June 8, 2023, 2:30 p.m. ET
The Supreme Court ruled connected Thursday that the First Amendment did not support a chew artifact for dogs resembling a vessel of Jack Daniel’s from a suit claiming trademark infringement.
The toy, the Bad Spaniels Silly Squeaker, has the signifier and different distinctive features of a vessel of Jack Daniel’s but with, as an appeals tribunal justice enactment it, “lighthearted, dog-related alterations.”
The words “Old No. 7 Brand Tennessee Sour Mash Whiskey” connected the vessel are replaced connected the artifact by “the Old No. 2, connected your Tennessee carpet.” Where Jack Daniel’s says its merchandise is 40 percent intoxicant by volume, Bad Spaniels’ is said to beryllium “43 percent poo.”
A tag attached to the artifact says it is “not affiliated with Jack Daniel Distillery.”
Justice Elena Kagan, penning for a unanimous court, seemed amused by the dispute. “This lawsuit is astir canine toys and whiskey,” she wrote, “two items seldom appearing successful the aforesaid sentence.”
She added that the characteristics of the whiskey vessel were acquainted to astir everyone.
“A vessel of Jack Daniel’s — no, Jack Daniel’s Old No. 7 Tennessee Sour Mash Whiskey — boasts a just fig of trademarks,” she wrote. “Recall what the vessel looks similar (or amended yet, retrieve a vessel from wherever you support liquor; it’s astir apt there).”
After reproducing a colour photograph of the bottle, she continued: “‘Jack Daniel’s’ is simply a registered trademark, arsenic is ‘Old No. 7.’ So excessively the arched Jack Daniel’s logo. And the stylized statement with filigree (i.e., twirling achromatic lines). Finally, what mightiness beryllium thought of arsenic the level for each those marks — the whiskey’s distinctive quadrate vessel — is itself registered.”
Trademark cases mostly crook connected whether the nationalist is apt to beryllium confused astir a product’s source. In the Bad Spaniels case, a unanimous three-judge panel of the Court of Appeals for the Ninth Circuit, successful San Francisco, said the First Amendment required a much demanding trial erstwhile the challenged merchandise was expressing an thought oregon constituent of view.
“The Bad Spaniels canine toy, though surely not the equivalent of the Mona Lisa, is an expressive work” that uses irreverent wit and wordplay to poke amusive astatine Jack Daniel’s, Judge Andrew D. Hurwitz wrote for the panel.
But Justice Kagan said determination was nary relation for “any threshold First Amendment filter” successful the case. Rather, she wrote, “the infringement assertion present rises oregon falls connected likelihood of confusion.”
That is the classical enquiry successful trademark cases. But Justice Kagan, successful returning the lawsuit to little courts to analyse it, said the chew toy’s mockery of the liquor vessel had to fig successful the analysis, arsenic it was not evident that consumers would deliberation that Jack Daniel’s was liable for a artifact poking amusive astatine itself.
Justice Samuel A. Alito Jr. made a akin constituent when the lawsuit was argued successful March, imagining a transportation gathering with a Jack Daniel’s executive.
“Somebody successful Jack Daniel’s comes to the C.E.O. and says: ‘I person a large thought for a merchandise that we’re going to produce. It’s going to beryllium a canine toy, and it’s going to person a statement that looks a batch similar our label, and it’s going to person a sanction that looks a batch similar our name, Bad Spaniels, and what’s going to beryllium purportedly successful this canine artifact is canine urine,’” Justice Alito said, suggesting that consumers were improbable to deliberation the chew artifact was produced oregon endorsed by the distiller.
Justice Kagan echoed the constituent successful her opinion. “Consumers,” she wrote, “are not truthful apt to deliberation that the shaper of a mocked merchandise is itself doing the mocking.” She added, “Self-deprecation is 1 thing; self-mockery acold little ordinary.”
In a concurring opinion, Justice Sonia Sotomayor, joined by Justice Alito, cautioned little courts against being excessively credulous successful assessing surveys, which are commonplace successful trademark litigation, “that purport to amusement that consumers are apt to beryllium confused by an allegedly infringing product.”
Those surveys, she wrote, “may bespeak a mistaken content among immoderate survey respondents that each parodies necessitate support from the proprietor of the parodied mark.”
In a Supreme Court brief successful the case, Jack Daniel’s Properties v. VIP Products, No. 22-148, lawyers for the distiller wrote that “everyone likes a bully joke.” But the chew toy, the little said, “confuses consumers by taking vantage of Jack Daniel’s hard-earned bully will.”
Lawyers for the toy’s manufacturer, VIP Products, said it was pursuing “in the playful parodic contented that has ranged implicit a half-century from Topps’s Wacky Packages trading cards done ‘Weird Al’ Yankovic.”
The trading cards, for fake products that mimicked existent ones, similar Ratz Crackers, Jolly Mean Giant and Gulp Oil, were enormously fashionable successful the 1970s, for a clip outselling Topps shot cards. “Yet the satellite did not end,” VIP Products told the justices.