Jack Daniels Gets Chewed Up In Trademark Case Over 'Bad Spaniels' Doggy Chew Toy
from the that's-ruff dept
We've seen roughly a zillion trademark disputes and cases in the alcohol industries, but perhaps nothing quite like this. Jack Daniels, the famous liquor company, found itself in a prolonged court battle with VIP Products LLC. At issue? Well, VIP makes a doggy chew toy that is a parody of Jack Daniels' famous whiskey bottle and trade dress. See for yourself.
So, while the toy isn't exactly similar to the Jack Daniels bottle, it's a clear homage or parody of it. Parody, of course, has space carved out for it by the First Amendment. While trademark law might lead one to see a problem here, it's the fact that even this commercial product is expressive parody that keeps it from being trademark infringement.
The Jack Daniels folks didn't agree. The company issued VIP a cease and desist notice, claiming trademark infringement. In response, VIP sued for declaratory judgement that its product was not infringing by asserting First Amendment protections. Jack Daniels then countersued for trademark infringement. While a district court ruled for Jack Daniels, arguing essentially that VIP's dog toy was not an expressive work because it wasn't a book, movie, or song, the U.S. Court of Appeals for the 9th District vacated that ruling and stated that further proceedings would need to determine if Jack Daniels can demonstrate that it can apply the Rogers test for VIP's chew toy.
On appeal, the Ninth Circuit held that the district court erred in finding that the Bad Spaniels toy was not an expressive work. The court explained that “[a] work need not be the expressive equal of Anna Karenina or Citizen Kane” to be considered expressive; nor is a work “rendered non-expressive simply because it sold commercially.” VIP Prods., No. 18-16012, at 10 (citations and quotation marks omitted). The court observed that it recently had “little difficulty” concluding that greeting cards containing trademarked phrases were expressive works entitled to First Amendment protection, even though they did not show great “creative artistry.” Id. (quoting Gordon v. Drape Creative, Inc., 909 F.3d 257 (9th Cir. 2018)). Although, the court acknowledged, the Bad Spaniels toy “surely [is] not the equivalent of the Mona Lisa,” it is nevertheless an expressive work. Id.
Accordingly, the court held that, as a threshold matter, the Rogers test needed to be applied. Under that test, a trademark infringement plaintiff must show that the defendant’s use of the mark either (1) is “not artistically relevant to the underlying work” or (2) “explicitly misleads consumers as to the source or content of the work.” Id. at 9 (quoting Gordon, 909 F.3d at 265). The Ninth Circuit vacated the district court’s finding of infringement and remanded for a determination, in the first instance, of whether Jack Daniel’s can satisfy either element of the Rogers test.
It seems damn near impossible to imagine any scenario in which Jack Daniels manages to satisfy the Rogers test. And the real question is why it felt any of this expensive litigious adventurism was necessary in the first place. How about just having a glass of whiskey and enjoying the homage?
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Filed Under: 1st amendment, bad spaniels, chew toys, dog toys, expression, free speech, whisky
Companies: jack daniels, vip products
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Disgusting, foul smelling and plasticky. And the dog chew isn't much better.
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So, you've tasted both?
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Re: Re:
Great, just great. If the AC who is intelligent enough to read and type responses is confusing the two products, then this won't pass the "moron in a hurry" test and Jack Daniels wins.
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Not Parody?
I don't mean to nitpick, but I don't believe it's correct that "it's the fact that even this commercial product is expressive parody that keeps it from being trademark infringement." The court never identifies it as parody. It definitely is (and is identified as) expressive, though, and its the expressiveness that gets it First Amendment protection. FWIW, I think your references to it as an "homage" works well.
It's arguably not parody because it doesn't really comment on the original mark, the company, or its products. Though, to be clear, the court didn't decide either way.
Thanks for the article!
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Re: Not Parody?
To be a really good parody, it would be a dog-pee cleaner/deodorizer for your carpet, rather than just a chew toy. To tell the truth, without the headline stating it was a chew toy, I would have assumed that it was some kind of cleaning fluid based on the label.
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Well, obviously, Jack Daniels is getting into the chew toy business. Its a move they've been planning for 50 years and then it gets all wrecked by this upstart.
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Re: parody
A parody (/ˈpærədi/); also called a spoof, send-up, take-off, lampoon, play on (something), caricature, or joke, is a work created to imitate, make fun of, or comment on an original work—its subject, author, style, or some other target—by means of satiric or ironic imitation. https://en.wikipedia.org/wiki/Parody
This seems like a useful sort of parody https://www.youtube.com/watch?v=tNzsNkGUI4g&list=PLZ1f3amS4y1f3kYcmzyezHvlMj_wWmco4
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Another homage?
In t-shirt form https://www.pinterest.com.au/pin/324470348135301048/
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Re: Another homage?
Oooh boy. Jack Daniels takes on God. That I would love to see.
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Re: Re: Another homage?
The Man who sued God.... https://www.youtube.com/watch?v=9ZfJywXiRyw
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Re: Re: Re: Another homage?
Now, that's definitely "expensive litigious adventurism"!
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Agree to disagree, I guess.
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Didn't they try this on another whiskey?
I think they also sued a brand of whiskey over the shape of their bottle, being square like Jack Daniel's is, with Jack claiming they have been making it for over a hundred years. That was until Evan Williams pointed out that they had the same shape bottle over a hundred years before Jack Daniels.
BTW, Evan Williams is about half the price of Jack and a real bourbon without that vomit-y taste.
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Two different types of whiskey. There is something about the processes that is different, leading to ``Tennessee'' whiskey being dry and ``Bourbon'' being sweet.
So far as I know, you can make ``Tennessee'' style whiskey outside of that state, and ``Bourbon'' style whiskey outside of Kentucky. So far as I know, however, the main competing ``Tennessee'' style whiskey is in fact made in Tennessee.
I have essentially no knowledge of the processes and how they differ. Nor have I any knowledge of why the Techdirt managers do not look into the now-popular ``HTML'' mark-up language, which is less prone to mung quotes.
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I'm not a lawyer and don't play one on TV, so maybe I'm missing something, but isn't there an even more obvious reason this is not trademark infringement: customer confusion (or lack thereof).
I don't think anyone is going to buy a dog toy when they want some whiskey. I doubt that my local liquor store even has a dog toy section. Wouldn't the infringing product have to be in the same market and risk customer confusion for a valid trademark infringement case?
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"I don't think anyone is going to buy a dog toy when they want some whiskey."
Oh, idk - I've seen drunk people do some really weird things.
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Not to miss the attempt at humor but that's precisely why the "only a moron in a hurry" is the actual legal standard for these sorts of things.
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I remember a case something like this a few years back, Louis Vuitton vs Chewy Vuitton. In that case the dog toy won because it was in a different market, eliminating the possibility of customer confusion. The same is true in this case.
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Remember Lardashe jeans?
lol
Jordache Enterprises, Inc. v. Hogg Wyld, Ltd
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First I've heard of that, but long story short:
“Our review of the record convinces us that the public will not associate Lardashe jeans with the appellant or, if they do, they will only make the association because of the parody and not because they believe Jordache Enterprises manufactures Lardashe jeans.”
Proving that you can even compete in the same market and still not be infringing on another company's trademark!
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Re: Re:
First I've heard of that, but long story short:
“Our review of the record convinces us that the public will not associate Lardashe jeans with the appellant or, if they do, they will only make the association because of the parody and not because they believe Jordache Enterprises manufactures Lardashe jeans.”
Proving that you can even compete in the same market and still not be infringing on another company's trademark!
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I don't think parody is a valid trademark infringement defense. That's a copyright defense. The valid defense here is that Jack Daniels, AFAIK, doesn't make doggie chew toys resembling its famous whiskey bottle. Ergo, its product cannot be confused with Bad Spaniels #2 Tennessee Carpet.
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Well, the law says otherwise. Many trademark-infringement cases have been filed and lost over parody Facebook/Twitter accounts or URLs precisely because parody isn’t trademark infringement.
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