In a highly publicized case, the Supreme Court of the United States ruled in favor of Jack Daniels and against a company that marketed and sold a spoof dog chew toy.  The toy was shaped like a Jack Daniels’ whiskey bottle.  It used similar coloring and stylized labeling as the Jack Daniels’ bottle.  Finally, it contained other similarities to the well-known Jack Daniels’ whiskey bottle, including the following labeling: “Bad Spaniels,” “The Old No. 2,” and “on your Tennessee Carpet.”  Anyone who has enjoyed a few Jack and Cokes, knows these are plays on words, mimicking the phrases found on a Jack Daniels’ bottle.

Jack Daniels asked the company – VIP Products LLC (“VIP”) – to stop selling the dog toys, claiming that the toys unfairly infringed on their famous trademarked whiskey bottle.  VIP refused and filed a preemptive lawsuit attempting to establish that its dog toy did not infringe Jack Daniel’s trademark.  The Ninth Circuit Court of Appeal agreed with VIP and ruled in its favor.

The Supreme Court of the United States, however, reversed the decision. In reaching this conclusion, the Supreme Court rejected VIP’s argument that the dog toy was protected by the First Amendment because the toy represented an expressive work or parody.  Because the dog toy did not qualify for First Amendment protection, the issue of whether the dog toy infringed on Jack Daniel’s trademark must be analyzed under the standard likelihood-of-confusion analysis that applies to typical trademark infringement claims.

The Supreme Court’s ruling is welcome news for trademark owners.  It will make it easier for brand owners to successfully “sic” or “unleash” their lawyers on infringers.  If you need to register, maintain or protect your brand, contact the attorneys at Navigato & Battin.