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By Alexis Waiss
Cronkite News
WASHINGTON – An Arizona dog-toy manufacturer told the Supreme Court Wednesday that its “Bad Spaniels” squeaky toy is a “playful parody” of Jack Daniel’s that does not infringe on the distiller’s trademarks.
Bennett Cooper, the attorney representing VIP Products LLC of Phoenix, said the case was about defending “the right of everybody to have a sense of humor.”
“It’s clear in this case that what Jack Daniel’s is complaining about is not Bad Spaniels” possibly confusing consumers into thinking the toy was connected to the distiller, Cooper said. “They’re complaining about the speech, the parody, the comparison to dog poop and a Bad Spaniel, not the mark.”
But an attorney for Jack Daniel’s Properties Inc. told the justices that it’s no laughing matter. Lisa Blatt called Bad Spaniels a commercial product that capitalizes on Jack Daniel’s trademark to the confusion of consumers and the detriment of the company’s brand. Whether it’s “funny or it has a parody is not relevant,” she said.
“‘Ha, ha, ha’ is not a standard under the Lanham Act,” the law governing trademark protection, Blatt said. “It’s whether it’s confusing as to (the) source.”
Bad Spaniels is just one of VIP Products’ “Silly Squeakers” line that also includes toys such as Jose Perro and Mountain Drool that are reminiscent of Jose Cuervo tequila and Mountain Dew soda, among others.
The Bad Spaniels toy mimics Jack Daniel’s square bottle and the font of the white-on-black lettering on the label. But it features the cartoonish face of a spaniel and replaces the liquor bottle’s “Old No. 7 Tennessee Whiskey” with “The Old No. 2 on your Tennessee carpet.” While the Jack Daniel’s label lists alcohol content and proof, the Bad Spaniels label says the contents are “43% POO” and “100% SMELLY.”
Jack Daniel’s demanded in 2014 that VIP Products stop selling Bad Spaniels, and VIP went to court seeking a ruling that its toy was a parody that did “not infringe or dilute” the distiller’s trademark.
The distiller filed a counterclaim, and a U.S. District Court judge agreed with Jack Daniel’s in 2018. Even though Bad Spaniels was an “expressive work,” it was still a commercial product, which meant it could not receive the exception to trademark infringement that a parody would enjoy under the Lanham Act, according to a VIP filing with the Supreme Court.
That ruling was reversed by the 9th U.S. Circuit Court of Appeals on the grounds that Bad Spaniels, “although surely not the equivalent of the Mona Lisa, is an expressive work” that communicates a “humorous message.”
“Bad Spaniels comments humorously on precisely those elements that Jack Daniels seeks to enforce here,” the circuit court said in its 2020 ruling. “The fact that VIP chose to convey this humorous message through a dog toy is irrelevant.”
The appellate court said that, under a doctrine known as the Rogers test, Jack Daniel’s could win only if it could show that the use of its trademark was not artistically relevant to Bad Spaniels or that it “explicitly misleads” consumers.
Jack Daniel’s appealed to the Supreme Court. Blatt told justices Wednesday that a survey by Jack Daniel’s showed consumers were confused about who was behind the toy, which she said indicates the parodist “did too much copying and not enough distinguishing.”
An incredulous Justice Samuel Alito pressed Blatt on that claim, asking how “any reasonable person” could think Jack Daniel’s was behind the toy. He envisioned a pitch meeting in which the CEO is told about “a dog toy, and it’s going to have a label that looks a lot like our label, and it’s going to have a name that looks a lot like our name, Bad Spaniels, and what’s going to be purportedly in this dog toy is dog urine.”
“Do you think the CEO is going to say that’s a great idea, we’re going to produce that thing?” he asked.
When Blatt said “it’s a little rich for people who are at your level … to know what the average purchasing public thinks,” Alito responded that he had a dog so “I know something about dogs.”
But Justice Elena Kagan pushed back on Cooper’s argument that products, like hats or T-shirts, could be protected from trademark infringement claims if they carried a message. Kagan rejected the suggestion that Bad Spaniels is such a product,
A political T-shirt “says something, it’s making a point. But dog toys are just utilitarian goods and you’re using somebody else’s mark as a source identifier, and that’s not a First Amendment problem,” Kagan said.
Even though trademark law can impose a restriction on free-speech rights, Justice Ketanji Brown Jackson worried that the law could go too far and end up hindering artists who reference trademarks in their works.
“We have these artists with First Amendment rights or parodists or whoever,” Jackson said. “And the way we prevent infringing their rights is by making sure that trademark holders are only able to come in and accuse them of problems if they … the artists, are trying to designate the source of their products by using the mark.”
VIP Products owner Steven Sacra, who was on hand for the arguments, said it was “bizarre” to see the dispute over one of his Silly Squeakers toys argued before the Supreme Court.
Sacra said it has been a costly and litigious process to get to this point, and that he hopes the justices ultimately “side on freedom of expression” to protect others from having to go through what he’s experienced. Without that, he said, large businesses will be able to pressure creators “to say I’m never going do this again because it’s too expensive, and therefore, speech doesn’t exist.”
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Web links:
_ Arguments transcript: https://www.supremecourt.gov/oral_arguments/argument_transcripts/2022/22-148_3d94.pdf
_ Arguments audio: https://www.supremecourt.gov/oral_arguments/audio/2022/22-148
_ Silly Squeakers: https://mydogtoy.com/silly-squeaker
_ Jack Daniel’s: https://www.jackdaniels.com/en-us/our-products
_ 9th Circuit ruling: https://cdn.ca9.uscourts.gov/datastore/opinions/2020/03/31/18-16012.pdf
_ Jack Daniel’s petition: https://www.supremecourt.gov/DocketPDF/22/22-148/233482/20220815135341762_Jack%20Daniels%20Petition%20for%20Writ%20of%20Certiorari_8.5.22_as%20refiled%208.15.22.pdf
_ VIP court brief: https://www.supremecourt.gov/DocketPDF/22/22-148/243298/20221017173555298_22-148_Brief.pdf
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Bennett Cooper, in bow tie, talks outside the Supreme Court, where he defended VIP Products, an Arizona dog-toy maker, against a trademark-infringement claim filed by Jack Daniel’s Properties. (Photo by Alexis Waiss/Cronkite News)