Jack Daniel’s seems to take issue with the First Amendment fair use protections of parody, as the whiskey distilling powerhouse is going after a dog toy manufacturing company with a claim of trademark infringement due to the company selling a novelty chew toy dubbed “Bad Spaniels” which parodies the whiskey brand’s iconic Old No. 7 bottle.
And apparently, the Supreme Court is willing to hear the case.
On November 21st, the Supreme Court granted a petition for a writ of certiorari in the case of Jack Daniel’s Properties, Inc. v. VIP Products LLC, meaning that the nation’s highest court could eventually render a decision in this case that will either reaffirm existing First Amendment protections or greatly diminish the rights surrounding parody and fair use.
VIP Products is a Phoenix, Arizona, company that is in the business of making dog toys, with one of their popular lines being Silly Squeakers – a line of novelty dog toys that largely parodies a wide variety of beverage brands ranging from Coca-Cola to Jack Daniel’s.
A cursory review of VIP Product’s website reveals the obvious parodical nature of these dog toys, with products like “Pawsifico Perro” (which mockingly spoofs beer brand Pacifico Claro) and “Smella Arpaw” (which takes aim at Stella Artois) clearly demonstrating the dog-related puns at the center of the novelty dog toy line.
But the particular Silly Squeakers creation that has landed VIP Products in the litigious crosshairs of Jack Daniel’s is their parody of the Old No. 7 whiskey bottle, with Silly Squeakers naming the chew toy “Bad Spaniels” which continues the dog-puns on the label with, “The old No. 2 on your Tennessee carpet.”
In Jack Daniel’s complaint lodged against VIP Products, the whiskey company is asserting that the novelty chew toy violates federal trademark rights and also tarnishes the Jack Daniel’s brand as a whole.
Most folks have a general idea of what a trademark is, often likening them to copyrights and patents, which the aforementioned are reasonable comparisons since they all live in the realm of protecting intellectual properties – but trademarks are specifically used to protect the branding of products and services.
According to the U.S. Patent and Trademark Office, “A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It’s how customers recognize you in the marketplace and distinguish you from your competitors.”
The purpose of a trademark is to make it so that other companies can’t blatantly plagiarize a branded product, as in making and selling near-indistinguishable counterfeit goods and outright product knockoffs.
Basically, trademarks laws are set in place to protect the intellectual property owner from potential lost revenue over counterfeits and knockoffs and also to avert potential consumer confusion.
But then there’s the element known as fair use of intellectual property, and parody is one of the core examples of fair use, so long as the parody fulfills certain obligations. An article written by Howard Winter in the New York Law Journal detailed the balancing act required to ensure one is legally squared away when parodying a trademark.
“A trademark parody must convey two simultaneous and contradictory messages: that it is the original, but also that it is not the original and is instead a parody. While a parody must call to mind the actual product to be successful, the same success also necessarily distinguishes the parody from the original product. To the extent it does only the former, not only is it a poor parody, but is vulnerable to attack by the trademark owner. The second message must not only differentiate the parody from the original, but also must communicate some articulable element of satire, ridicule, joking, mockery or irreverent commentary.”
It would be reasonable to say that anyone of sound mine with a functioning set of eyeballs can tell that while the Bad Spaniels dog toy from VIP Products is intentionally mimicking aspects of the Jack Daniel’s Old No. 7 whiskey bottle, the culmination of dog-related puns and the distinct graphic of a cartoon Cocker Spaniel easily conveys that the product is a novelty parody item.
Furthermore, back in February of 2020, the U.S. Court of Appeals for the 9th Circuit ruled in favor of VIP Products regarding the trademark infringement suit brought by Jack Daniel’s over the dog toy at the center of this controversy.
“[T]he Bad Spaniels dog toy, although surely not the equivalent of the Mona Lisa, is an expressive work…The toy communicates a ‘humorous message’…using word play to alter the serious phrase that appears on a Jack Daniel’s bottle – ‘Old No. 7 Brand’ – with a silly message – ‘The Old No. 2.’ The effect is ‘a simple’ message conveyed by ‘juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner’…affording First Amendment protection to a message ‘that business and product images need not always be taken too seriously’. Unlike the book in Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc…which made ‘no effort to create a transformative work with ‘new expression, meaning, or message,’ Bad Spaniels comments humorously on precisely those elements that Jack Daniels seeks to enforce here.”
As crazy as it sounds, Jack Daniel’s has been going after this company through the courts since 2014 over this novelty dog toy that parodies their whiskey bottle, meaning that Jack Daniel’s is attacking the First Amendment – and so are Campbell’s Soup Co. and Levi Strauss, as they filed motions in support of Jack Daniel’s urging the Supreme Court to take up the case.
Courtney Armour, who serves as the chief legal officer for the Distilled Spirits Council, which represents Jack Daniel’s parent company Brown–Forman, issued a statement applauding the Supreme Court for being willing to hear the case.
“We are pleased that the Supreme Court has decided to hear this case. The alcohol beverage industry has long worked to ensure that our products are advertised in a responsible manner and trademark infringers can severely jeopardize these efforts.”
In VIP Product’s motion opposing Jack Daniel’s petition for a writ of certiorari, the novelty dog toy company lambasted Jack Daniel’s for not having “a sense of humor” and for attacking “the playful parodic tradition” that has been a staple for decades in American culture.
“It is ironic that America’s leading distiller of whiskey both lacks a sense of humor and does not recognize when it—and everyone else—has had enough. Petitioner Jack Daniel’s Properties Inc. (‘JDPI’) has waged war against Respondent VIP Products LLC for having the temerity to produce a pun-filled parody of JDPI’s iconic bottle – the Bad Spaniels Silly Squeaker dog toy. In the playful parodic tradition that has ranged over a half century from Topps’s Wacky Packages trading cards through ‘Weird Al’ Yankovic, VIP put out a chewable dog toy. VIP has never sold whiskey or other comestibles, nor has it used ‘Jack Daniel’s’ in any way (humorously or not). It merely mimicked enough of the iconic bottle that people would get the joke.”
It is expected that the Supreme Court will be hearing arguments in early 2023 regarding the case.