Washington – The Supreme Court on Thursday gave whiskey maker Jack Daniel’s reason to raise a glass, giving the company a new chance to win in a trademark dispute with the makers of toy dog Bad Spaniels.
Announcing the decision before a unanimous court, Justice Elena Kagan was in an unusually cheerful mood. At one point while reading a summary of the opinion in the courtroom, Kagan lifted the toy, which beeps and mimics his signature bottle of whiskey.
Kagan said the lower court’s reasoning was flawed when it ruled for the makers of the chew toy. The court did not decide whether the game maker had violated trademark law, but instead sent the case back for further review.
“This case concerned dog toys and whiskey, two items rarely appearing in the same sentence,” Kagan wrote in an opinion for the court. At another point, Kagan asked readers to “remember what the bottle looked like (or better yet, retrieve a bottle from wherever you keep the liquor; you might be there)” before inserting a color picture of it.
Arizona-based VIP Products has been selling its toy Bad Spaniels since 2014. It’s part of the company’s Silly Squeakers line of chew toys that mimic liquor, beer, wine, and soda bottles. They include Mountain Drool, which parodies Mountain Dew, and Heini Sniff’n, which parodies Heineken beer.
While Jack Daniel’s bottles contain the words “Old No. 7 Brand” and “Tennessee Whiskey Sour Mash,” the game announces: “Old No. 2 on your carpet in Tennessee.” The original bottle notes that it contains 40% alcohol by volume. The parody shows a dog’s face and says it’s “43% poo by volume”. and “100% stinks”.
The packaging for the game, which retails for about $20, is noted in small print: “This product is not affiliated with Jack Daniel Distillery.”
Jack Daniel’s, based in Lynchburg, Tennessee, wasn’t amused. Its lawyers argued that the game misleads customers, making profits “from Jack Daniel’s hard-earned goodwill” and associating “whiskey with crap”.
At the center of the case is the Lanham Act, the country’s primary federal trademark law. It is prohibited to use a trademark in a manner that is “likely to cause confusion … as to the origin, sponsorship, or approval of … goods.”
However, a lower court never dealt with the issue of consumer confusion, because it said the game was an “expressive work” that communicated a humorous message, and therefore needed to be evaluated under a different test. Kagan said that this was a mistake and that “the only question in this case going forward is whether signs of bad Spaniards are likely to cause confusion.”
Kagan also said a lower court erred in its analysis of Jack Daniel’s claim against the toy company for associating “its whiskey with less salty substances”.
That opinion is one of four the court handed down Thursday, including a 5-4 ruling in favor of black voters in Alabama in a congressional redistricting case. The case has been closely watched for potentially undermining the historic Voting Rights Act.
The case is Jack Daniel’s Properties, Inc. v. VIP Products LLC, 22-148.