Dogs, Whiskey, and Intellectual Property: Need I Say More?

by Josh H. Escovedo
The IP Law Blog

Jack Daniel’s Properties, Inc. has petitioned the Supreme Court of the United States for certiorari following an unfavorable ruling from the Ninth Circuit in the matter of VIP Products LLC v. Jack Daniel’s Properties, Inc. In that case, VIP Products sued Jack Daniel’s after receiving a cease-and-desist letter concerning its Bad Spaniels Silly Squeaker dog toy. The toy is intentionally similar to the famous Jack Daniel’s Old No. 7 whiskey bottle, but is clearly intended to be a joke.

Instead of saying Jack Daniels, the bottle says Bad Spaniels and includes a cartoonish cocker spaniel. Below that, where the Jack Daniel’s bottle usually says “Old No. 7,” the toy says “The Old No. 2” above “on your Tennessee Carpet” where the real bottle says Tennessee Whiskey. The squeaky toy is clearly intended as joke for dog owners, and I don’t believe it would confuse consumers into believing the product is actually associated with Jack Daniel’s. Jack Daniel’s apparently felt differently.

The district court agreed with Jack Daniel’s. While ruling on a motion for summary judgment, the district court held that the Rogers test, which is used to balance the interests between trademark law and the First Amendment, was inapplicable because the toy is not an expressive work. Later, after a four-day bench trial, the District Court ruled against VIP Products and found it had infringed Jack Daniel’s IP.

VIP Products promptly appealed the matter to the Ninth Circuit, arguing that the district court erred in finding that the toy wasn’t expressive. The Ninth Circuit agreed with VIP and held that a “work need not be the expressive equal of Anna Karenina or Citizen Kane” to be considered expressive. The Ninth Circuit recognized that the Bad Spaniels Toy is “not the equivalent of the Mona Lisa,” but found that it is still expressive. The Ninth Circuit therefore remanded the matter to the district court to apply the Rogers test, which requires the mark holder to show the putative infringer’s use of the mark either (1) is “not artistically relevant to the underlying work” or (2) “explicitly misleads consumers as to the sources or content of the work.”

Of course, Jack Daniel’s was displeased with the Ninth Circuit’s ruling and petitioned the Supreme Court for certiorari. In its petition, Jack Daniel’s framed the relevant question presented as follows:

Whether a commercial product using humor is subject to the same likelihood-of-confusion analysis applicable to other products under the Lanham Act, or must receive heightened First Amendment protection from trademark-infringement claims, where the brand owner must prove that the defendant’s use of the mark either is “not artistically relevant” or “explicitly misleads consumers.”

It’s clear from the question presented that Jack Daniel’s is upset that the Ninth Circuit directed the district court to apply the Rogers test instead of simply considering the humorous nature of the product as one of the Sleekcraft factors applied to determine likelihood of confusion. In fact, Jack Daniel’s said exactly that in the petition and stated that “[e]very court of appeals confronting a similar case has exercised common sense and applied the traditional likelihood-of-confusion test under the [Lanham Act].”

I hope the Supreme Court grants certiorari. It would be interesting to see the matter briefed again and argued before The Nine. Although, given the intersection between dogs, whiskey, and intellectual property, I may be biased.