Trademarking their turf: Jack Daniel’s, Arizona dog-toy maker spar in court

Photo By Alexis Waiss/Cronkite News: Bennett Cooper, in bow tie, tall 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. 

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.”