Your dog may soon once again be able to get spit all over a squeaky plastic "bottle" of Bad Spaniels, thanks to the United States Supreme Court.
The Court declined Monday to hear the case of Jack Daniel's vs. VIP Products, an Arizona-based producer of dog toys that has a line of products that parody alcoholic beverages, with names like Heinie Sniffn and Hamster Light.
|Supreme Court Opens Another Case of Wine|
|Vineyard Lawsuit a Test for Napa|
|Ex-Porn Star Champagne Court Case a Fizzer|
The upshot is that, though Jack Daniel's was not amused, the Ninth Circuit Court of Appeals thinks they're funny.
"VIP Products' Bad Spaniels toy appropriates Jack Daniel's trade dress in virtually every respect, while adding poop-related humor," the whiskey giant's petition to SCOTUS reads. "It replaces 'Jack Daniel's' with 'Bad Spaniels', along with the image of a spaniel. It also replaces 'Old No. 7 Tennessee Sour Mash Whiskey' with 'Old No. 2 on your Tennessee Carpet'. And it replaces '40% ALC BY VOL (80 PROOF)' with '43% POO BY VOL' and '100% SMELLY'. The remaining features – the square bottle shape, ribbed neck, arched lettering, filigreed border, color scheme, font styles, and size –are nearly identical."
Not funny at all, says Jack Daniel's! A district court basically agreed with Jack Daniel's, which was not without precedent: Anheuser-Busch sued VIP Products more than a decade ago over a toy called "Buttwiper" (there is a beer with a similar name) and won an injunction. Dom Pérignon also successfully sued a company that sold popcorn in a replica of its bottle shape and called it "Dom Popignon"; you can't buy that anymore, but you can see one in the Musée de la Contrefa?on (Museum of Fakes) in Paris.
Jack Daniel's complained that it licenses its name, which it spent "hundreds of millions of dollars promoting", to use on other products. On its website you can currently buy Jack Daniel's-branded t-shirts, hats, coffee, BBQ sauce, coffee mugs, coasters, belt buckles, towels, blankets, metal tubs, clocks, bar stools, Christmas ornaments, door mats, cribbage boards, pool tables, tote bags, folding chairs, cornhole games, backpacks, duffel bags, aprons and spatulas. (No dog toys though.)
But the appeals court, citing a decision in Louis Vuitton Malletier vs. Haute Diggity Dog involving Chewy Vuiton dog toys, wrote: "The Bad Spaniels dog toy, although surely not the equivalent of the Mona Lisa, is an expressive work. The toy communicates a humorous message ... using word play to alter the serious phrase that appears on a Jack Daniel’s bottle – 'Old No. 7 Brand' – with a silly message – 'The Old No. 2'," the appeals court decision reads. "The fact that VIP chose to convey this humorous message through a dog toy is irrelevant."
The appeals court vacated Jack Daniel's injunction against the toy and remanded the case to the lower court to rehear using a higher standard of First Amendment protection for parodies.
VIP's attorney Bennett Cooper celebrated the decision, telling Wine-Searcher: "The Ninth Circuit followed settled precedent, which strikes the right balance to protect expressive speech. We look forward to bringing this litigation to conclusion in the district court."
Brown-Forman, which owns Jack Daniel's, did not respond to a request for comment.
The Buttwiper and Bad Spaniels cases differ mostly by venue. Anheuser-Busch sued VIP in Missouri, which is in the Eighth Circuit for court of appeals purposes. In this case, VIP Products started off the case by asking for a declaratory judgment in its home state of Arizona, putting the case in the Ninth Circuit. When two circuits disagree about the rule of law, the Supreme Court is asked to take the case. Just like its decision the same day to not hear the Michigan wine shipping case, the Court may have declined to take this case because the court of appeals ordered a remand to the lower court rather than making a final judgment.
The liquor industry is not amused about this ruling, so wipe that smile off your face or we'll put you outside.
"We're concerned that this sets a bad precedent, that the famous marks that our companies have invested in could be used in ways that are irresponsible," said Courtney Armour, chief legal officer for the Distilled Spirits Council of the United States (DISCUS). "It could undermine our responsible advertising efforts. The industry is very careful in advertising to make sure we are not targeting individuals who are underage and we're not advertising excessive consumption. We're concerned that other people could use famous alcohol trademarks to advertise irresponsible behavior, just by putting humor in it."
DISCUS was joined in an amicus brief calling VIP a very bad dog by the Wine Institute, the Beer Institute, American Craft Spirits Association and the American Distilled Spirits Alliance. Campari and Constellation Brands submitted their own amicus briefs against VIP, as did Campbell Soup, which is probably still pissed off at Andy Warhol. The only amicus brief supporting VIP came not as you might expect from pet owners, but from a group of trademark law professors led by one at Harvard Law School.
The Supreme Court accepts fewer than 3 percent of cases sent to it, so it's not surprising it didn't pick this one up and shake it. One might think the Court is overwhelmed this month by election cases, and indeed there were quite a few election-related petitions, but the only ones it didn't reject were regarding Pennsylvania extending its deadline to accept absentee ballots, which would not change enough votes to affect the result.
President Trump also petitioned the Supreme Court to ask whether Twitter violates people's First Amendment rights by blocking them. After his attorneys filed the petition, Twitter banned Trump himself. The Court ultimately treated Trump's petition this week like Bad Spaniels: it turned its head, ignored the barking and did nothing.
Armour said that the industry really doesn't think this is funny, or minor. Today it's dog toys; tomorrow it might be a company selling t-shirts using a product logo and a fictional phrase I'm just making up that nobody in the industry would ever use, like "Rosé All Day."
"These are just dog toys. It doesn't take much imagination to think somebody could come out with a product promoting binge drinking, or driving while impaired, or underage drinking," Armour said. "Those are very much not allowed under our responsible advertising code."
Unfortunately, in this case, Jack Daniel's ability to police its brand image has just been neutered.