Yesterday a US Supreme Court panel unanimously decided to support Jack Daniel's Tennessee Whiskey’s opposition to VIP Products’ ‘Bad Spaniels’ dog toy. They felt the product was an obvious parody of their brand.
During the proceedings the justices were told that Jack Daniel's did not accept a previous lower court's ruling that ‘Bad Spaniels’ qualified as an ‘expressive work’ and satire which meant it was protected by the US Constitution's First Amendment.
The proceedings themselves were described as lively. At one point Justice Elena Kagan held up the ‘Bad Spaniels’ chewy toy bottle, demonstrating just how much it looked like a whiskey bottle causing those in attendance to “erupt in laughter”.
The wording on the bottle was also highlighted. Instead of saying “promising 4o% alcohol by volume”, the ‘Bad Spaniels’ bottle promises “43% poo by volume, 100% smelly.”
The high court eventually reached its unanimous decision and overturned the lower court's ruling, which had thrown out the Jack Daniel's challenge on grounds that it violated First Amendment's protections for satire.
The Supreme Court explained the major reason for their decision was that companies want and get trade mark protection is to identify a product's source. This in turn allows it to distinguish itself from similar products. Justice Kagan stated that a trade mark “benefits consumers and producers alike" because it allows customers to differentiate products and make their own decisions as to which products and services they want to buy.
Given one of the main functions of a trade mark is to aid differentiation, Justice Kagan went on to say that she believed the registration of a trademark therefore allows the trade mark owner to sue when others use their mark for their own gain or to foster confusion within the market place. The second point appears to be highly relevant to this decision. In this case it was felt the way the dog toy was presented made it appear as it if had been endorsed by Jack Daniel’s.
This was a point underlined while the decision was delivered. Justice Kagan used the example of toymaker Mattel suing the band Aqua over the song ‘Barbie Girl’. The lyrics of the song included the line “a barbie girl in a barbie world” before confirming the girl was enjoying a “life in plastic”. However, it was decided this didn’t impact the Barbie name had not been infringed as the way it was used was not a source identifier.
The Jack Daniel’s case was different concluded Justice Kagan. She said VIP was selling its product by using the Jack Daniel's trade mark which could lead consumers to think Jack Daniel's authorised or endorsed it’s use or as Jack Daniel's put it in its brief:
"Jack Daniel's appreciates a good joke as much as anyone. But Jack Daniel's likes its customers even more and doesn't want them to be confused or associating its fine whiskey with dog poop."
It will be interesting to see if this decision will result in the case being moved to trial or persuade VIP to settle out of court before that happens.
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