The US Supreme Court has ruled in favour of Jack Daniel’s in a trademark dispute with a dog toy manufacturer. VIP Products made a chewable toy designed to look like a bottle of Jack Daniel’s whiskey, but with the name changed to “Bad Spaniels” and the brand’s slogan changed to “The Old No. 2 On Your Tennessee Carpet”. Jack Daniel’s took issue with the toy and filed a counterclaim for trademark dilution. The case centred on the Rogers test, which aims to balance public confusion with creative expression and looks at whether a use is artistically relevant to the underlying work.
According to a report from a recent ruling by the U.S. Supreme Court, Jack Daniel’s has emerged victorious in a trademark dispute over a “Bad Spaniels” dog toy. The unanimous decision comes after the whiskey brand filed a counterclaim for trademark dilution against VIP Products, the maker of the squeaky, chewable dog toy designed to look like a bottle of Jack Daniel’s whiskey.
The toy featured the words “Jack Daniel’s” transformed into “Bad Spaniels,” and “Old No. 7 Brand Tennessee Sour Mash Whiskey” changed to “The Old No. 2 On Your Tennessee Carpet.” Jack Daniel’s was not amused with the poop joke and asked VIP Products to stop selling the squeakers. However, when VIP refused, the fight moved to the courts.
At the core of the issue is the so-called Rogers test, established by the 2nd Circuit in 1989 to protect First Amendment rights in trademark issues. The test seeks to balance avoiding public confusion with encouraging creative expression and looks at whether a use is artistically relevant to the underlying work and if it’s explicitly misleading as to the or content of the work.
The matter had bounced back and forth between an Arizona federal court and the 9th Circuit. The district court ruled against VIP on summary judgment, finding it had used Jack Daniel’s features as trademarks for “ identification,” and therefore Rogers protections and fair use exceptions don’t apply.
The case then proceeded to a bench trial, where the District Court found that consumers were likely to be confused about the of the Bad Spaniels toy and that the toy’s negative associations with dog excrement (e.g., “The Old No. 2”) would harm Jack Daniel’s reputation. However, the Ninth Circuit reversed, finding the infringement claim subject to the threshold Rogers test. The Court of Appeals remanded the case to the District Court to decide whether Jack Daniel’s marks were used in a way that meets the Rogers test.
In a unanimous decision, the Supreme Court sided with Jack Daniel’s, stating that the Bad Spaniels toy infringed on the whiskey brand’s trademark and that VIP Products could not claim First Amendment protection. Justice Elena Kagan wrote in the opinion, “This case is about dog toys and whiskey, two items seldom appearing in the same sentence.”
The ruling is significant as it reinforces the importance of protecting trademarks and brand identities, even in cases where the use of the mark is not intended to be harmful or malicious. It also highlights the need to balance the protection of intellectual property rights with the freedom of expression and creativity.
With all of this in mind, the U.S. Supreme Court’s ruling in favor of Jack Daniel’s in the trademark dispute over the “Bad Spaniels” dog toy serves as a reminder of the importance of protecting trademarks and brand identities. While the case may have been about dog toys and whiskey, it has significant implications for the wider business community and the need to balance intellectual property rights with creative expression and freedom of speech.