Tennessee whiskey maker Jack Daniel’s and VIP Products, the makers of Silly Squeakers dog toys are heading to the Supreme Court on Wednesday, March 23, 2023. Silly Squeakers makes a line of dog toys that have an uncanny resemblance to many well-known beer and spirits brands. The manufacture claims the alcohol brand owners are barking up the wrong tree as it’s all in good fun and does not infringe their products.
In January 2023, six beer and wine associations including the American Craft Spirits Association – ACSA, American Distilled Spirits Alliance – ADSA (DBA: The Presidents’ Forum of the Distillery Spirits Industry – PFDSI), The Beer Institute, The Brewers Association, Distilled Spirits Council of the United States – DISCUS, and Wine Institute disagree and have filed an Amicus Brief to put a halt to the toy maker from using their brand likeness.
UPDATE: You can listen to the March 22, 2023 Supreme Court oral argument for Jack Daniel’s Properties, Inc. v. VIP Products, Docket Number: 22-148 here. The complete transcript is also included below.
Oral Arguments Excerpt – Dog Poo v. Dog Urine
It’s interesting to see how quickly things can go off the rails. Here is an excerpt from the oral arguments between Justice Alito and Attorney Lisa S. Blatt.
JUSTICE ALITO: All right. Let me envision this scene. Somebody in Jack Daniel’s comes to the CEO and says, I have a great idea for a product that we’re going to produce. It’s going to be a dog toy, and it’s going to have a label that looks a lot like our label, and it’s going to have a name that looks a lot like our name, Bad Spaniels, and what’s going to be in — purportedly in this dog toy is dog urine. You think the CEO is going to say that’s a great idea, we’re going to produce that thing?
MS. BLATT: No, but Nationwide ran a Super Bowl commercial with a dead child in it, and they had to pull it because it was such a bad idea. I don’t know who approved that one. It was really embarrassing for them.
JUSTICE ALITO: So a reasonable person would —
MS. BLATT: People make dumb commercials.
JUSTICE ALITO: — a reasonable person would not think that Jack Daniel’s had approved this?
MS. BLATT: I think, if you’re selling urine, you’re probably going to win on a motion to — I mean, on a 12(b)(6), but you’re probably also violating some state law. But, sure, the
JUSTICE ALITO: No, no, it doesn’t — you’re not selling urine. It’s exactly —
MS. BLATT: Oh, I thought you —
JUSTICE ALITO: — this toy.
MS. BLATT: Oh, I’m sorry, I thought it was — (Laughter.)
MS. BLATT: Oh, it says it contains urine.
JUSTICE ALITO: No. It’s exactly this toy —
MS. BLATT: I’m sorry.
JUSTICE ALITO: — which purportedly contains —
MS. BLATT: Oh.
JUSTICE ALITO: — some sort of dog excrement —
MS. BLATT: Oh, I’m sorry.
JUSTICE ALITO: — or urine.
MS. BLATT: Okay. My bad. (Laughter.)
JUSTICE ALITO: The CEA — the CEO is going to say this is a great idea.
MS. BLATT: Well, just showing how confused I was suggests that I would be your perfect consumer. (Laughter.)
The Supreme Court to Hear Oral Arguments on Jack Daniel’s v. Bad Spaniels
The Supreme Court will hear oral arguments on Wednesday in the Jack Daniel’s Properties Inc. v. VIP Products LLC. In an important trademark case regarding the dog toys with unsavory themes that imitate well known alcohol brands.
“This case is no laughing matter. While the case involves dog toys, even allegedly ‘humorous’ knockoffs can confuse consumers as to what messaging and products well-known alcohol beverage brands endorse,” said Courtney Armour, Distilled Spirits Council Chief Legal Officer. “The alcohol beverage industry takes its commitment to responsible advertising very seriously and trademark infringers can severely undercut these efforts and jeopardize the industry’s credibility. Companies must have control over their trademarks to ensure responsible advertising initiatives are effective and succeed.”
This case is not new. The whiskey maker and the toy maker have been down this road before. In 2018, a District Court judge ruled in Jack Daniel’s favor and enjoined VIP Products from selling their “Bad Spaniel’s Old No. 2 on your Tennessee Carpet” dog toy. The District Court found a likelihood that the infringing product would result in consumer confusion and that VIP’s use of juvenile bathroom humor would tarnish the Jack Daniel’s brand.
In 2020, however, the U.S. Court of Appeals for the 9th Circuit held that the dog toys were “expressive works” entitled to First Amendment protection and the use of a “humorous message” rendered the product “noncommercial” for trademark dilution purposes. The Supreme Court did not elect to take up the case at that time and the case was remanded to the lower courts, where it once again wound its way back up through the system and is now ripe for the Court to review.
In urging the Supreme Court to reverse the Ninth Circuit’s decision, the industry groups made the case in their amicus brief that if allowed to stand “the novel exceptions to trademark liability announced by the court below would immunize irresponsible and infringing use of alcohol beverage trademarks and trade dress, simply because such use is arguably humorous.”
– This Amicus Brief Stinks: Jack Daniel’s (40% ALC BY VOL) v. Bad Spaniels (43% POO BY VOL) Going to Supreme Court (Includes the actual brief.)
– What is an Amicus Brief / amicus curiae?
The Brief Claims ‘Humorous’ Use of These Brands Promotes Irresponsible Drinking
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The brief explained that “[i]f ‘humorous’ uses become exempt from the Lanham Act, ‘humorous’ infringement promoting irresponsible drinking will gut leading producers’ efforts to ensure socially responsible advertising…. Infringement implying that popular brands support such activities harms the industry—and society—by associating the industry’s best-known names with problematic drinking.”
The brief stated, “[t]he alcohol beverage industry has invested extensive resources in combatting irresponsible alcohol use. A vital part of the industry’s work is self-regulation carefully crafted to ensure that all advertising that uses trademarks associated with alcohol beverages promotes responsible adult consumption—and never improperly appeals to minors.”
The brief explained that the 9th Circuit’s holdings “opens the door to a host of problematic infringements of famous marks associated with alcohol beverages—on the basis that such infringing activities are supposedly just a laughing matter,” and “would appear to protect infringing activity that takes the form of jokes about underage drinking, excessive consumption, or drunk driving. From children’s toys to drinking game kits to automobile accessories, those making infringing products need only employ humor to escape liability for trademark infringement or dilution.”
The group underscored in the brief the beverage alcohol industry’s longstanding commitment to responsible advertising and effective self-regulation through their respective voluntary advertising and marketing codes and code review boards.
“These boards have successfully promoted compliance with the industry codes within the industry, on pain of being expelled from the association,” the brief stated. “Yet the boards have no ability to address irresponsible use of industry participants’ trademarks and trade dress by those outside the industry, whose marketing is not subject to industry rules…. If non-industry participants can infringe members’ marks in a manner that promotes irresponsible drinking, that loss of control directly undermines the industry’s self-regulation. In short, policing such misconduct requires rigorous trademark enforcement and robust legal protection of members’ marks.”
The amicus brief was filed by the Distilled Spirits Council of the United States, Beer Institute, Brewers Association, American Distilled Spirits Alliance, American Craft Spirits Association and Wine Institute.
Rumor has it ‘McGruff the Crime Dog’ may make a surprise appearance for this very important case. McGruff claims he is a neutral observer in this case and does not have a dog in this fight.
Supreme Court Oral Argument – Transcript, Jack Daniel’s Properties, Inc. v. VIP Products, Docket Number 22-148, 03-22-23
Silly Squeakers Dog Toys Promotional Video
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