Supreme Court sides with Jack Daniel's in trademark dispute with dog toy maker : NPR

Jun 10, 2023

By

Washington Desk

The U.S. Supreme Court, in a unanimous decision Thursday, sided with Jack Daniel's in its legal fight with Bad Spaniel, a dog toy maker that parodies the storied whiskey brand.

"We do not decide whether the Rogers test is ever appropriate, or how far the 'noncommercial use' exclusion goes," Justice Elena Kagan wrote for the court, specifying that Thursday's "opinion is narrow."

She added: "The use of a mark does not count as noncommercial just because it parodies, or otherwise comments on, another's products."

The often-cited Rogers test is a pivotal trademark precedent that allows artists to use another's trademark as long as it has artistic relevance to their work and provided it does not mislead consumers

Jack Daniel's, the famous Tennessee whiskey company, tried to stop production and marketing of the dog chew toy.

The toy, shaped and decorated like a Jack Daniel's bottle, features a spaniel and the name "Bad Spaniels" on the label instead of the iconic Jack Daniel's name. And instead of promising 40% alcohol by volume, it promises "43% poo by volume, 100% smelly."

The vinyl bottle is part of a line of chewy dog toys, called Silly Squeakers, which parodies other famous brands and is manufactured by VIP products, the country's second-largest dog toy manufacturer.

Jack Daniel's whiskey was not amused. It had been trying to stop VIP from selling the Bad Spaniels toy.

Jack Daniel's argued that it licenses its trademark to preserve its reputation, for instance licensing various dog products, including leashes, dog collars and a dog treat jar. The company contends that the lower court was wrong to conclude that the Bad Spaniels dog toy was a "humorous" and "expressive" work and thus immune from claims that it infringed on Jack Daniel's trademark.

If that ruling is allowed to stand, the company contended, anyone could use a famous trademark to sell sex toys, drinking games or marijuana bongs, while misleading customers and destroying billions of dollars in goodwill — all in the name of just having fun.

On Thursday, Kagan, writing for the court, said: "We hold only that it is not appropriate when the accused infringer has used a trademark to designate the source of its own goods – in other words, has used a trademark as a trademark. That kind of use falls within the heartland of trademark law, and does not receive special First Amendment protection."