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As a subscriber you can listen to articles at work, in the car, or while you work out. Subscribe NowThe Supreme Court on Thursday sided with Jack Daniel’s in a trademark fight with a company that recast the whiskey’s well-known bottle as a squeaky, chewable dog toy, associating the alcohol with poop.
In a narrow, unanimous ruling, the justices sent back to a lower court the case testing the line between trademark protections and free-speech rights.
As she announced the opinion from the ornate, hushed courtroom, Justice Elena Kagan held up the Bad Spaniels chew toy at issue from the bench, soliciting laughter from the audience and smiles from her colleagues.
“This case is about dog toys and whiskey, two items seldom appearing in the same sentence,” Kagan wrote in the 20-page ruling, featuring color photos of the toy and its cardboard tag, which says it is “not affiliated with Jack Daniel Distillery.”
To further make her point with another example, Kagan went on to sing a few lines from the song “Barbie Girl” – “Life in plastic, it’s fantastic” – the subject of an earlier trademark dispute with the toymaker Mattel.
The ruling was one of four the justices issued as they race to complete the term before the end of the month. In a separate opinion Thursday, the court upheld the right of individuals to sue state-owned nursing homes for violations of federal law.
The Jack Daniel’s case began in 2014 when VIP Products owner Steven Sacra added a parody of the whiskey’s black-label bottle to his line of Silly Squeakers dog toys mimicking other beverages, such as Corona beer and Mountain Dew soda. Instead of “Old No. 7 Tennessee Sour Mash Whiskey,” the toy declares: “Old No. 2 on your Tennessee carpet.” According to its label, Bad Spaniels is “43% POO BY VOL.”
Jack Daniel’s, which owns trademarks in the distinctive bottle, objected to the joke and told the company to stop. The parody, the company said, undermined those trademarks by allowing customers to think Jack Daniel’s had created the toy.
A district court ruled for the whiskey company and found consumers were likely to be confused about the source of the toy.
But the U.S. Court of Appeals for the 9th Circuit reversed that decision, saying the lower court did not take into account the parodic nature of the product. The appeals court judges relied on a ruling sprung from a dispute involving Ginger Rogers over a Federico Fellini film, and said Bad Spaniels is “an expressive work entitled to First Amendment protection.”
The high court reversed Thursday and said that rule does not apply in this case. The justices said the parody was not entitled to special First Amendment protection in part because the dog toy company, VIP, had copied Jack Daniel’s features as its own identifiers.
“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,” Kagan wrote. “That kind of use falls within the heartland of trademark law, and does not receive special First Amendment protection.”
Trademark law, Kagan said, is about avoiding consumer confusion about the source of a product.
“VIP uses the marks at issue in an effort to ‘parody’ or ‘make fun’ of Jack Daniel’s,” Kagan wrote. “And that kind of message matters in assessing confusion because consumers are not so likely to think that the maker of a mocked product is itself doing the mocking.”
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