The maker of Jack Daniel’s whiskey told the Supreme Court on March 22 that a dog toy maker whose chew toy parodies a bottle of the Tennessee distiller’s product violated its trademark.
The case deals with the interplay of the First Amendment and trademark protection laws and the extent to which one company may parody another’s product with its own product. The legal concern is whether the Constitution’s free speech protections insulate the parody product from trademark infringement claims by the maker of the product that’s being satirized.
Corporate America is concerned about trademark protection. Several companies, including Campbell’s Soup Company and clothes makers Patagonia Inc. and Levi Strauss and Co., filed briefs supporting Jack Daniel’s. On the other side, free speech advocates, including the Electronic Frontier Foundation, filed briefs stressing the importance of allowing people to make fun of popular brands.
The case concerns the Lanham Act of 1946, a federal law that regulates trademarks and unfair competition. The statute forbids using a trademark in a way “likely to cause confusion ... as to the origin, sponsorship, or approval of ... goods.”
The novelties company VIP Products sells a squeaking dog toy labeled “Bad Spaniels” in the shape of a Jack Daniel’s whiskey bottle, complete with a black-and-white label over what’s supposed to represent brownish liquor.
The real whiskey bottle label says the product is the “Old No. 7 brand” of “Tennessee Sour Mash Whiskey,” while the toy employs scatological humor, bearing a label that says “The Old No. 2 on Your Tennessee Carpet.”
The real whiskey notes that it’s 40 percent alcohol by volume, but the toy announces that it’s “43% Poo By Vol.” and “100% Smelly.” The toy also displays a small-font disclaimer saying, “This product is not affiliated with Jack Daniel’s Distillery.”
A federal district court found that VIP’s alleged First Amendment-protected interest in using Jack Daniel’s trademarks on the humorous canine product didn’t give it protection from infringement claims. But the U.S. Court of Appeals for the 9th Circuit reversed the ruling, finding VIP’s use of the trademark as parody rendered it “noncommercial” and therefore exempt from trademark dilution claims. Trademark dilution is when a third party uses a trademark in a way that lessens its uniqueness.
Jack Daniel’s attorney Lisa Blatt said during oral arguments on March 22 that it’s a problem that the toy resembles the company’s product and “associates its whiskey with dog poop.”
“Trademarks are ancient property rights that necessarily restrict speech to protect investment in goodwill and prevent consumer confusion, and parodies can be confusing. 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,” Blatt said.
“But absent these features, pervasive copying and trading off a brand’s goodwill tends to confuse. And survey results showing consumer confusion indicate that the parodist did too much copying and not enough distinguishing.”
Justice Samuel Alito pushed back, telling Blatt that he was “concerned about the First Amendment implications of your position” that elevates the Lanham Act over the Constitution.
Although Blatt said that “there are no constitutional issues” in the case, what the attorney otherwise said suggests otherwise, Alito said.
Trademarks and copyrights have existed since the 1500s, well before the First Amendment, according to Blatt.
Alito asked if she was arguing that “so long as something is protected by the Lanham Act, there is no First Amendment issue?”
“Yes, I think the Lanham Act is clearly constitutional,” Blatt replied.
Alito tried to correct the lawyer.
“The question isn’t whether it’s constitutional,“ he said. ”The question is whether it should be interpreted ... in a way that does not bring it into conflict with the First Amendment.”
People wouldn’t be confused as to the origins of the toy because they wouldn’t think Jack Daniel’s had authorized it, Alito suggested.
VIP’s attorney, Bennett E. Cooper, said his client was entitled to make a parody product.
“In our popular culture, iconic brands are another kind of celebrity,” Cooper said.
“People are constitutionally entitled to talk about celebrities and, yes, even make fun of them. Jack Daniel’s advertised in its self-serious way that ‘Jack’ is everyone’s friend, and Bad Spaniels is a parody playful in comparing Jack to man’s other best friend.”
Justice Elena Kagan didn’t seem to think that the Bad Spaniels toy was a parody at all.
“What is the parody here?” she asked. “Because maybe I just have no sense of humor, but what’s the parody?”
Cooper said that “the parody is to make fun of marks that take themselves seriously.”
“You say that, but you ... make fun of a lot of marks: Doggie Walker, Dos Perros, Smella R Paw, Canine Cola, Mountain Drool,” Kagan replied. “Are all of these companies taking themselves too seriously?”
Cooper said, “I think there are a lot of products that take [themselves] too seriously.”
The court may rule in Jack Daniel’s Properties Inc. v. VIP Products LLC., court file 22-148, by June or July.
