Prof. Laura E. Little (Temple Law School), 20 December 2022
Jack Daniel’s whiskey manufacturer initiated this case when VIP Products started to market a dog toy in the image of a Jack Daniel’s liquor bottle. VIP designs, markets, and sells “Silly Squeakers,” dog toys resembling the bottles of well-known beverages and reflecting dog-related themes. An example is VIP’s toy in the form of a rubber Mountain Dew bottle, labeled “Mountain Drool.” The Jack Daniel’s toy followed that same parodic approach. VIP’s proffered goal for creating these various Silly Squeakers is to show “the humanization of the dog in our lives,” and to comment on the tendency of corporations to take themselves very seriously.
In July of 2013, VIP introduced the Bad Spaniels squeaker toy. The toy is roughly in the shape of a Jack Daniel’s bottle and has an image of a spaniel over the words “Bad Spaniels.” The Jack Daniel’s label says, “Old No. 7 Brand Tennessee Sour Mash Whiskey;” and the label on the Bad Spaniels toy replaces that phrase with “the Old No. 2, on your Tennessee Carpet.” A tag attached to the Bad Spaniels toy states that the “product is not affiliated with Jack Daniel Distillery.” Here is a depiction of the two bottles that appeared in Jack Daniel’s petition for review in the US Supreme Court:
The case bounced around in the lower US federal courts for several years and ultimately the US Supreme Court agreed this last November to hear the case. The case now presents two legal issues to the Court. First, the Supreme Court will hear arguments on whether VIP’s use of the Jack Daniel’s trademark confused consumers about whether or not “Bad Spaniels” is a Jack Daniel’s product. The Court also agreed to evaluate whether “Bad Spaniels” diluted and tarnished the product goodwill and public reputation that the Jack Daniel’s company had created over the years.
Potential Impact of the Case
United States law books are overflowing with cases evaluating whether a parody infringes a trademark. The cases take contrasting approaches to the issue. For example, some cases evaluate whether an alleged parody of a product or other work is protected expression under the First Amendment of the US Constitution. Other cases confine their analysis to the US trademark statutes.
In the Jack Daniel’s case, the Supreme Court would do an important service for commercial industry and for parody artists by clarifying the appropriate legal approach to trademark parodies. In addition, the case provides an opportunity to delineate the relationship between commercial expression and noncommercial expression. (The First Amendment generally provides far less protection for commercial expression — such as in an advertising circular – than for noncommercial expression -– such as in a fiction novel or a political cartoon).
For those watching how humor plays out in the courts, the case promises particularly important insights. Is the Supreme Court planning to explore the question “what is funny?” Not surprisingly, the lower court in the case resolved the dispute in large part by deciding that VIP’s Jack Daniel’s parody is indeed comical. Here is a clip of the lower court’s analysis:
[T]he 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 effect is “a simple” message conveyed by “juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner.” Affording First Amendment protection to a message “that business and product images need not always be taken too seriously”, . . . Bad Spaniels comments humorously on precisely those elements [of its product] that Jack Daniels seeks to enforce here. The fact that Bad Spaniels chose to convey this humorous message through a dog toy is irrelevant.VIP Products LLC v. Jack Daniel’s Properties, Inc., 952 F.3d 1170, 1175 (9th Cir. 2020).
One wonders whether the Supreme Court will venture to articulate a fixed legal test for identifying protectable humor. (One also wonders whether nine men and women, steeped in decades of linear thinking about the law, are the best arbiters of what constitutes humor). Of further complication, the case puts the Court on the horn of a dilemma emerging from two contrasting values that the now-very conservative Supreme Court holds dear: private-property rights and freedom of expression. Prediction is a fraught enterprise, but one observation suggests that freedom of expression may win: the Supreme Court has shown considerable deference for the importance of parody in US society—even in the context of trademark law. See, e.g., Iancu v. Brunetti, 139 S. Ct.2294 (2019) (holding that trademark law’s bar on “immoral” or “scandalous” trademarks violates freedom of expression principles); Matal v. Tam, 137 U.S. 1744 (2017) (holding that free speech protections prohibited the federal trademark prohibition against disparaging trademarks); Hustler v. Falwell, 484 U.S. 46 (1988) (heralding the value of parody in US history and debate and thus providing First Amendment protection for parody’s expression). Finally, the question arises what is the effect this case will have on another parody case listed on the US Supreme Court docket: Novak v. City of Parma, No.22-293 (US Supreme Court 2022). Most notably, the satirical website The Onion filed a friend-of-the-court brief in the Novak case –written in parody form—urging the Court to reverse a lower court decision protecting law enforcement from liability for arrest a person who parodied the government.
Laura E. Little is James G. Schmidt Professor of Law at Temple Law School, Philadelphia, PA USA