The US Supreme Court revived a lawsuit by the maker of Jack Daniel’s in a trademark clash over a chewable dog toy designed to mimic the iconic whiskey bottle.
(Bloomberg) — The US Supreme Court revived a lawsuit by the maker of Jack Daniel’s in a trademark clash over a chewable dog toy designed to mimic the iconic whiskey bottle.
The unanimous ruling is a victory for Jack Daniel’s Properties Inc., the Brown-Forman Corp. unit that makes the country’s best-selling whiskey. It’s a setback for VIP Products LLC, whose “Bad Spaniels” toy substitutes poop jokes for the words on the actual Jack Daniel’s bottle.
The case tested the reach of trademark rights in the face of First Amendment claims. A federal appeals court had ruled that Jack Daniel’s couldn’t enforce its trademarks against VIP Products, saying the toy was an expressive work entitled to free-speech protection.
Justice Elena Kagan, who wrote the opinion for the court, called the ruling “narrow.”
The Supreme Court threw out a lower court’s ruling that the chew toy is an “expressive work” protected by the First Amendment. But the justices said the so-called Rogers test, which allows trademark use in expressive works if it is artistically relevant, did not apply in this case.
The case will now return to the lower courts, giving Jack Daniels another chance to press its claims against VIP Products. Moving forward, the case will center on whether consumers are confused about whether the Bad Spaniels product is a product of Jack Daniels.
“The only question in this suit going forward is whether the Bad Spaniels marks are likely to cause confusion,” Kagan wrote. Confusion over source “is the bête noire of trademark law — the thing that stands directly opposed to the law’s twin goals of facilitating consumers’ choice and protecting producers’ good will.”
Jack Daniel’s argued that under the US Lanham Act, trademark owners are entitled to protection against goods likely to confuse consumers, without any exception for expressive works. The Biden administration backed the whiskey maker.
The decision could make it easier for some trademark holders to sue companies that parody their marks on commercial goods.
The case is Jack Daniel’s Properties v. VIP Products, 22-148.
(Updates with more about the case starting in third paragraph.)
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