Listen to oral arguments as recorded live before the Court:
When is a poop-themed dog toy just a poop-themed dog toy?
That’s the question the Supreme Court considered last month during unusually scatological oral arguments that at times had Justices and observers tittering like middle schoolers. Venerated whiskey maker Jack Daniel’s challenged VIP Products’ claim that its “Silly Squeakers” line of toys are works of art shielded from trademark law by the First Amendment.
Lawyers for VIP said the chew toy at issue—a rubber facsimile of a square bottle that bears a striking resemblance to a fifth of Old No. 7 and retails for $16.95–is a “noncommercial” parody.
“The parody is to make fun of marks that take themselves seriously,” attorney for VIP Bennett Cooper argued.
The toy does bear a disclaimer on the back of the bottle in small type which states: “This product is not affiliated with Jack Daniel Distillery.”
But in its Supreme Court petition, attorneys for Jack Daniels wrote:
“Bad Spaniels appropriates Jack Daniel’s marks and trade dress in virtually every way.
The toy replaces ‘Jack Daniel’s’ with ‘Bad Spaniels,’ along with the image of a spaniel. It replaces ‘Old No. 7 Tennessee Sour Mash Whiskey’ with ‘Old No. 2 on your Tennessee Carpet.’ And it replaces “40% ALC. BY VOL. (80 PROOF)” with ‘43% POO BY VOL.’ and ‘100% Smelly.’
“The remaining features—the square bottle shape, ribbed neck, arched lettering, filigreed border, color scheme, font styles, and size—are nearly identical,” the petition said.
In her opening remarks to the Supreme Court, Jack Daniel’s attorney Lisa Blatt said that VIP violated the Trademark Act of 1946, also known as the Lanham Act, because VIP’s “Bad Spaniels” toy creates consumer confusion and tarnishes the Jack Daniel’s brand reputation, diluting its value.
“Trademarks are ancient property rights that necessarily restrict speech to protect investment in goodwill and prevent consumer confusion, and parodies can be confusing,” Blatt told the Court. “Now, as a practical matter, parodies won't confuse when differences in marks, markets, or message, typically ridicule, signal that the brand company didn't make the joke.”
When the case was first filed, a federal district court ruled in favor of Jack Daniel’s, in part crediting a survey expert hired by the distiller. The court found that Jack Daniels had satisfied the likelihood-of-confusion standard, citing the expert’s opinion that 29% of potential purchasers believed Bad Spaniels was associated with Jack Daniel’s. The court added that 29% was “nearly double” the 15% threshold courts typically recognize as establishing likely confusion.
In his opening remarks to the Supreme Court, attorney Bennett E. Cooper argued that free speech rights were too important to be governed by data gleaned from instruments as fallible as surveys or polls.
“Fundamentally, the First Amendment is not a game show where the result is: survey says, I'm confused, stop talking,” he told the Justices.
In her questioning of Cooper, Justice Elena Kagan challenged his parody defense, wondering if it cast too wide a net.
“You make fun of a lot of marks,” Kagan said. “Doggie Walker, Dos Perros, Smella R Paw, Canine Cola, Mountain Drool. Are all of these companies taking themselves too seriously?”
“I think, as applied here, there's no doubt that Jack Daniel's takes itself very seriously,” Cooper said.
When VIP first began selling Bad Spaniels in 2014, Jack Daniels sent VIP a cease-and-desist letter. That triggered a lawsuit by VIP seeking the right to continue sales and a countersuit by Jack Daniels seeking an injunction to bar sales. Jack Daniels did not seek monetary damages.
The U.S. District Court in Arizona ruled in favor of Jack Daniels, rejecting claims by VIP that its toy satisfied the often-invoked “Rogers Test.” That test conveys “heightened First Amendment protection” to works that are non-commercial, artistically relevant, and not explicitly misleading as to origin, sponsorship or approval of the work.
In seeking to balance free speech and expression with trademark and publicity rights, the Rogers Test established a higher burden on plaintiffs when the asserted mark or name at issue is used in an artistic context. The 1989 case rejected a right of publicity claim asserted by famed dancer and actress Ginger Rogers, who claimed Italian film producer Alberto Grimaldi was infringing on the commercial rights to her name. The film at issue was “Ginger and Fred,” directed by the legendary director Federico Fellini. The film follows a pair of aging cabaret dancers who imitate the routines of Rogers and Fred Astaire. In affirming the judgment for Grimaldi, the Second Circuit held that Section 43(a) of the Lanham Act does not bar reference to another’s name in a creative work where “minimally relevant” and where it does not explicitly denote authorship, sponsorship, or endorsement or mislead as to content.
In deciding the Bad Spaniels case, the Court has the power to overturn or modify Rogers v. Grimaldi, which has been widely adopted. If it does, it may mean the end of a legal defense that many defendants have relied upon for more than 30 years.
“So would we have to dispose of or overrule Rogers in order to focus more clearly on likelihood of confusion under the Lanham Act, or can they co-exist?” Justice Clarence Thomas asked.
“No,” Blatt said. “Obviously not... the test involves a non-application of the Lanham Act because the Second Circuit thought the Lanham Act struck the wrong balance.”
Blatt said Jack Daniel’s could still win the case on narrow grounds, but that overturning Rogers would bring clarity to a gray area of the law where decisions sometimes seem arbitrary.
“Once you acknowledge or assume Rogers,” Blatt said, “you immediately get into the situation of you're saying: ‘I will allow a confusing short film but not a confusing commercial; I'll allow a confusing painting, but I won't allow a confusing wallpaper; I'll allow a confusing video game, but I won't allow a confusing board game.’”
If the court decides the matter without overturning Rogers, it may not become a landmark case, but it still has the potential to take a bite out of VIP’s bottom line.
The company’s dog toy website offers 33 different alcohol- and soda-themed chew toys. Each is a parody of a well-known brand, and ironically, each is protected with its own registered trademark symbol.
If there is controversy surrounding the Supreme Court battle with Jack Daniel’s, it doesn’t appear to have hurt sales of the Bad Spaniels toy. It sold out shortly after oral arguments on March 22 and remains out of stock as of press time.
THE TAKEAWAY
For a lawsuit involving such a frivolous product, the Bad Spaniels case raises surprisingly thorny issues. When cases implicate both traditional intellectual property rights, such as trademark, as well as First Amendment issues relating to free expression, free speech, the right to criticize, and parody, the First Amendment will typically win out. Moreover, the question arises as to what reasonable person is likely to be confused into believing that Jack Daniel’s permitted use of its mark in connection with a poop-themed dog toy or whether the product really has any impact on the value of Jack Daniel’s famous mark.
However, the Court could decide the case on more limited grounds. The “speech” and “expression” inherent in the toy seems so trivial that the Supreme Court may decline to view the product as a creative work subject to the heightened protection of the Rogers Test. In order to maintain the long-applied Rogers Test, the Court may be inclined to rule that its application was erroneous in this particular case because the Bad Spaniels dog toy is simply an amusing product (maybe, if the Court is inclined to be charitable) that does not meaningfully implicate First Amendment concerns. In any event, the case highlights the tricky issues that can arise when one uses the identity or trademark of another without permission for mixed commercial and expressive purposes.
Article by Kevin Lynch and James Griffith