Supreme Court rejects Jack Daniel’s dog toy infringement case

In September 2020, whiskey company Jack Daniel’s submitted an appeal to the US Supreme Court, asking a previous verdict ruling that a parody dog toy, designed to look similar to their classic bottle, did not infringe their trade marks. However, this week the court denied the case.

The distiller was first taken to court by VIP Products LLC, the makers of the ‘Bad Spaniels Silly Squeakers’ toy in question in 2014, following a number of cease and desist letters sent from Jack Daniels, owned by Brown-Forman. Initially at bench trial, the toy was ruled to indeed infringe their trade marks. However, in March 2020, this ruling was overturned by the US Court of Appeals for the Ninth Circuit, as the toy was found to be protected under the First Amendment as an ‘expressive work’.

To succeed in the appeal, Jack Daniels were required to satisfy the ‘Rogers test’, whereby the trade mark owner must prove the product misleads consumers as to the source of work or bares no artistic relevance to the underlying work. Following the Ninth Circuit ruling, Judge Andrew Hurwitz stated that the toy, replacing many of the phrases on the iconic black and white labelled bottle with dog-related puns, ‘although surely not the equivalent of the Mona Lisa, is an expressive work’. The distiller responded saying the response was damaging to their brand, insinuating they sponsored the crude dog toy, emphasising free speech had gone too far.

Furthermore, six alcohol association companies offered their support for the appeal following Jack Daniels submission in September, arguing it could promote further infringements, confuse consumers and dilute the value of many brands. Fellow alcohol beverage brands, Campari and Constellation supported the plight as VIP Products also produce similar toys resembling trade marked bottles of their own, with the latter calling the toy companies business model ‘parasitic’.

However, seemingly Jack Daniels failed to convince the Supreme Court as their petition was denied, although no explanation was offered. David Bray, an attorney of VIP Products, stated the decision was justified and looked forward to concluded the litigation in the district court.

By Ellie King, student from Southampton Solent University