Like many other large companies with international reputations, distiller Jack Daniel’s is well aware of the power of branding—and the importance of protecting the elements of that brand.
Now, the whiskey giant is embroiled in a tug of war with dog toy manufacturer VIP Products, LLC, over a squeaking chew toy called “Bad Spaniels” that spoofs Jack Daniel’s distinctive bottle and label designs.
But will this dog hunt for the legendary distiller, or is Daniel’s case against VIP Products all bark and no bite?
Let’s take a closer look at the arguments in what may be one of the stranger IP cases I’ve seen in some time!
Background
This bonkers case has been in litigation for years, ever since Jack Daniel’s Properties, Inc., who owns the intellectual property for the iconic designs that create the Jack Daniel’s brand, became aware of a small dog toy manufacturer producing a “Bad Spaniels” squeak toy that mimicked many of the brand’s signature elements.
After VIP Products’ claims were upheld by lower courts, the case made it to the Supreme Court in 2021 and was rejected, sending the parties back to a lower court for a summary judgment of the infringement claims leveled by Jack Daniel’s against VIP Products. VIP Products prevailed, and now Jack Daniel’s is going back to the Supreme Court in hopes that the lower courts’ ruling will be overturned.
And this case hasn’t even STARTED to get weird yet!
One of the crucial linchpins in the case is the long shadow cast by the Lanham Act, which sets forth four crucial criteria for infringement. If any of these criteria are met, possible infringement may be present. The criteria are:
Trademark infringement: Is the allegedly infringing product sufficiently similar in its particulars to that product to mislead the public into believing they are, in fact, the same product produced by the same person, persons, or group?
Trademark dilution: If the allegedly infringing product is allowed to continue in the public space, is there a risk of “watering down” the strength of the original owner’s mark or marks by giving a false appearance or pretense of being authorized or produced by the original owner?
Unfair competition: Does the alleged infringement place the original mark owner and the interloper in direct competition in a way that might damage the original mark owner’s brand?
False advertising: Does the alleged infringement create the appearance in the mind of a reasonable person that the original owner authorized, is involved in, or profits from the alleged infringement in any way?
Based on these criteria, the invocation of the Lanham Act by Jack Daniel’s Properties seems risky at first glance. While the fonts and designs are similar, they are not the same, as you can see above. A discerning member of the public can readily spot the differences between the two, the most obvious being that as far as I know, Jack Daniel’s doesn’t count pet toys among the plethora of branded merchandise it offers. Thus we can rule out unfair competition and false advertising, which leaves only the trademark infringement and dilution elements of the Lanham Act.
Now the water (whiskey?) starts to get a little muddier…
In Rogers v. Grimaldi, film and dance legend Ginger Rogers sued MGM to prevent the release of a film entitled Ginger and Fred, claiming the title constituted infringement upon her right of publicity and to profit from her own name and image. Rogers ultimately lost the case, in part because the Supreme Court held that the Lanham Act must be balanced against artistic expression as protected by the First Amendment and upheld MGM’s and Grimaldi’s arguments.
Rogers v. Grimaldi is relevant to this case because VIP Products, LLC, and the lower courts, relied heavily on the case’s narrow reading of the Lanham Act in the initial decisions favoring “Bad Spaniels.” However, Jack Daniel’s Properties argues that Rogers v. Grimaldi’s reading of the scope and applicability of the Lanham Act was improperly applied by the lower courts and is appealing the ruling to the Supreme Court (for the second time), in hopes the nation’s highest court will throw them a bone and put VIP Products in the doghouse.
…and then the whole thing goes to the dogs.
Jack Daniel’s asserts, in its brief to the Supreme Court, that “VIP has not explained why its message is more deserving than Jack Daniel’s message, Jack Daniel’s goodwill, or the public’s interest in not being misled.” It warns of brand dilution becoming a potentially irreversible trend if VIP’s arguments are upheld, saying “affirmance would sidestep Congress’ meticulous protections for trademarks, enabling profiteers to misappropriate marks to create their own brands, regardless of serious customer confusion or mistaken association with incompatible brands.” It concluded by saying, “alcohol and toys don’t mix well, and the same is true for beverages and excrement.”
In its response in October 2022, VIP Products wrote, “It is ironic that America’s leading distiller of whiskey both lacks a sense of humor and does not recognize when it—and everyone else—has had enough.” An amicus curiae (friend of the court) brief filed by the Electronic Frontier Foundation in support of VIP says, in part, that “discarding the Rogers test would be a mistake…. Trademarks are ubiquitous in the modern world, and the same attributes that make them useful for identifying the source of goods or services also make them a powerful expressive tool for commenting on their owners and society…The Rogers test is a key shield against the mark owner’s sword. And trademark owners do not hesitate to respond with legal threats based on those uses of their brand. Eliminating the Rogers test would upend decades of nationwide precedent and make it significantly easier for trademark owners to chill critical and comedic expression.”
Who’s wagging who?
But then the briefs and filings became even stranger, at least on VIP’s side. VIP petitioned the Court to allow it to send ten “Bad Spaniels” toys to the Court to be entered into the official record and demonstrate why the toys do not infringe Jack Daniel’s IP, but are in fact a parody product designed specifically as an ironic commentary on the brand.
This would be odd enough, but then MSCHF Studios, an art collective, got in on the act, sending the Supreme Court justices “connect the dots” images including famous IP such as Winnie the Pooh—staring into an apparently empty bottle of Jack Daniel’s whiskey, which was designated for Justice Katanji Brown Jacksson, and a play on the hammer-and-sickle banner of the former Soviet Union, adding the famous Arm and Hammer logo, for Chief Justice John Roberts. MSCHF stated their intent was to make a point about artistic expression and that, should the justices choose to complete and return the connect-the-dots pictures, they would be shown at a future gallery showing.
However, MSCHF asked, “Will [these images] be rendered illegal prior to that exhibition?” It’s a valid question that warrants careful consideration, because it begs another very important question by its nature.
Where’s the line between parody, which is free speech protected by the Constitution, and IP infringement, which is not?
If people needed to ask for permission to parody a brand, no political cartoonist would be safe and half of the skits on Saturday Night Live would be eliminated. The monologues of Stephen Colbert and Jimmy Kimmel would be very different, and any number of works of art would be deemed infringing and therefore illegal by their very existence. While the Supreme Court has largely shied away from projecting broad assertions over IP in general, preferring to rely on statute and settled case law to guide it, the Jack Daniel’s case may leave them no choice—with potentially chilling effects on artistic expression and the First Amendment as we know it.
No matter how this case goes down, one thing seems certain: one of the parties is going to learn that you can’t drink with the big dogs if you expect to pee with the pups!
About the Author
John Rizvi is a Registered and Board Certified Patent Attorney, Adjunct Professor of Intellectual Property Law, best-selling author, and featured speaker on topics of interest to inventors and entrepreneurs (including TEDx).
His books include “Escaping the Gray” and “Think and Grow Rich for Inventors” and have won critical acclaim including an endorsement from Kevin Harrington, one of the original sharks on the hit TV show – Shark Tank, responsible for the successful launch of over 500 products resulting in more than $5 billion in sales worldwide. You can learn more about Professor Rizvi his patent law practice at www.ThePatentProfessor.com
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