Jack Daniels are notoriously protective of their famous Black Label logo. But, their most recent defense of their iconic IP, a legal battle with a dog toy company, is taking matters to the next level. The dispute appears to be headed for the Supreme Court—and JD’s fellow distillers are throwing their weight behind Old No. 7.
A slew of entities including six spirits producers, the Distilled Spirits Council of the United States (DISCUS), the International Trademark Association, and the Campbell Soup Company filed amicus briefs in support of Jack Daniel’s petition for certiorari in Jack Daniel’s Properties Inc. v. VIP Products LLC.
At issue is VIP Products ‘Silly Squeakers’ line of liquor bottle shaped dog toys. Specifically, VIP’s “Bad Spaniel” imitation to Jack. (The label promises “No. 2 On Your Carpet.”) VIP also offers novelty versions of other brands including Bacardi and Kahlua.
Back in 2014, JD tried to cease-and-desist VIP’s gag gift, but the dog toymaker responded with a lawsuit. The case wrangled its way through the legal system over the next six years. Most recently, the US Court of Appeals for the Ninth Circuit ruled in favor of VIP, declaring that the toys were “expressive” and satirical, therefore protected by the First Amendment.
Six years of legal wrangling, JD filed one final appeal to the Supreme Court. The SCOTUS petition was quickly followed by industry support in the form of amicus briefs which allow third parties to weigh in on behalf of one the litigants.
For example, Campari filed a brief directly addressing VIP’s Silly Squeakers Aperol based toy, Hairball. (The bottle reads ‘Gatto Italiano’.)
“Campari has been victimized by the respondent’s crude and juvenile dog toys, which confuse consumers, dilute the value of the targeted brands, and infringe intellectual property rights.”
Likewise, industry trade group DiSCUS also argued on behalf of JD. “The alcohol beverage industry has long worked to ensure that our products are advertised in a responsible manner,” said Courtney Armour, DISCUS Chief Legal Officer. “The 9th Circuit opinion threatens to undermine those efforts by inviting trademark infringers to pirate famous alcohol beverage brands so long as they add a humorous twist. This case involves dog toys, but it does not take much imagination to see how this could lead to ‘humorous’ products that encourage binge drinking and blacking out, underage drinking, or drunk driving. The industry must have control over their trademarks for responsible advertising initiatives to succeed.”
The case will boil down to the ‘Rogers Test’. Named after Fred and Ginger Rogers, the tool is employed to judge the presence of trademark infringement. The trademark owner must prove that the second usage “explicitly misleads as to the source or content of the work.”