Jack Daniel’s takes dog toy to court over trademark infringement

Whiskey maker Jack Daniel’s has logged an appeal with the US Supreme Court to overturn a ruling that a dog toy did not infringe on its trademarks.

The Bad Spaniels dog toy

As reported by Law360.com, Jack Daniel’s submitted its appeal to the court last Friday (18 September) arguing for the previous verdict to be overturned.

Jack Daniel’s, which is owned by Brown-Forman, was first taken to court by the maker of the Bad Spaniels Silly Squeakers dog toy in 2014 after the distiller sent cease and desist letters to the company.

The toy, which is made by VIP Products, is a rubber bottle designed to look similar to the classic Jack Daniel’s bottle, with black labels and white text. Instead of ‘Old No. 7’ and the words ‘Tennessee sour mash whiskey’, the dog toy instead includes the wording ‘The Old No.2 on your Tennessee carpet’.

Jack Daniel’s is not the only well-known alcohol brand depicted in the company’s Silly Squeakers range. Others include Smella Arpaw (Stella Artois), Heinie Sniff’n (Heineken), Blameson Triple Steak (Jameson), Killer Bite (Miller Lite), Barkparty (Bacardi), Hairball (Aperol), Chewy Breederer (Louis Roederer) and Doggie Walker (Johnnie Walker).

Back in March this year, the US Court of Appeals for the Ninth Circuit ruled that the toys were “expressive” works which conveyed a humorous message, and thus its use of similar trademarks and branding to Jack Daniel’s was protected by the First Amendment.

Judge Andrew Hurwitz stated: “The Bad Spaniels dog toy, although surely not the equivalent of the Mona Lisa, is an expressive work.”

However, Jack Daniel’s is not seeing the funny side.

In its appeal it wrote: “Because the court of appeals thought [VIP Products’] notorious copying was funny, it held that the company has a First Amendment interest in confusing consumers into believing that Jack Daniel’s sponsors a dog toy spotlighting poop,” the company wrote.

In its appeal, Jack Daniel’s must prove that the dog toy misleads consumers under the so-called Rogers test.

The Rogers test is used to protect the use of trademarks in works of creative expression. The trademark owner must prove that the product in question either has no artistic relevance to the underlying work, or explicitly misleads as to the source or content of the work.