Trademarks, Spoofs, and Dog Toys: Jack Daniel’s Properties v. VIP Products

By Shannon K. McDonald, Esquire

Recently a unanimous United States Supreme Court rebuked dog toy maker VIP Products for infringement on Jack Daniel’s famous whiskey bottle. In a case that seems so obvious, but also so harmless to the dog toy owner, Jack Daniel’s sued to stop the production of a certain dog toy. They toy was apparently a squeaky toy “about the same size and shape as an ordinary bottle of Jack Daniel’s.” The Court notes that the font on the label of the toy is similar to that of the Jack Daniel’s bottle as well. And, the court notes, even the slogan is pulled from Jack Daniel’s; “Old No. 2 On Your Tennessee Carpet” it says.

Justice Elena Kagan wrote the opinion that all joined, and gave a nice primary on trademark law, for those of us who don’t consider it often. First, she reminds us, that a trademark identifies a product’s source and distinguishes it from any other brand. And second, trademark law only allows “infringement” where there is confusion “about source of a product or service.” This source issue becomes the central matter in the case: Bad Spaniels appears to use the same source for its toy as Jack Daniel’s for its whiskey.

Justice Kagan thus waived away any First Amendment claims of parody, because although you might think the toy is a good joke, it does not use Jack Daniel’s mark in a “non-source identifying way.” That is, a consumer, Justice Kagan states, could easily think that the same maker was making the dog toy and the whiskey. She sums it very nicely by stating at the close of the opinion: “[t]he cardinal sin under the law … is to undermine” the ability reliably to indicate the source of goods. “ [C]onfusion is most likely to arise when someone uses another’s trademark as a trademark … rather than for some other expressive function.”

Thus they overturned the lower court’s excusing the dog toy on First Amendment grounds. As other readers of the opinion note, it’s an unusual case in that it focuses on core issues and lays out very vigorous discussion on the importance of confusion.

W.