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?

Filed Under: 1st amendment, bad spaniels, chew toys, dog toys, expression, free speech, whisky
Companies: jack daniels, vip products

UK Intellectual Property Office Refuses Beer Brewery's Request To Block Trademark Application For Whisky

from the mmmm-whisky dept

For as long as I've spent time screaming about trademark issues in the alcohol industry in these here pages, I've repeatedly made the point that trademark laws the world over should be more nuanced when it comes to defining competitive marketplaces. The alcohol industries are perfect examples of this, with a fairly discerning customer base that is quite capable of knowing the difference between a beer and a single-malt whisky, or a bottle of wine, or the horror upon humanity that is sangria. But too many governing IP offices and courts take the lazy route of lumping these micro-markets into a macro-market for the purposes of claiming competition in trademark disputes.

But the courts don't always get this question wrong. Some, in fact, do bother to take the time to weigh the sophistication of the likely buyers of products within a marketplace when rendering a decision on a trademark dispute. And that seems to have been at least in part at play in a recent decision to allow a trademark to proceed for a whisky brand despite the objection raised by a beer brewer.

Jim McEwan, 68, was stunned when the beer giant threatened to derail his plans for a self-titled whisky business on the Isle of Islay where he lives. Brewer Charles Wells, which owns the McEwan’s range of Scots beers, objected to Mr McEwan registering his own name as a trademark.

The brand’s trademark agents said the application overlapped with their registered trademark “McEwan’s” and people could confuse the two businesses. They said Mr McEwan could benefit from this confusion, and called for his application to be blocked.

Now, Jim McEwan was helped in this dispute at least somewhat by the fact that he's basically Whisky Jesus in Europe. In the circles of the whisky industry, McEwan is a well-known name, having worked in the industry for decades, and having even been named to Whisky Magazine's Hall of Fame. Those of us who drink real whisky aren't any more likely to confuse a whisky with his name on it with a beer than we would confuse it with a gym shoe. That his trademark application was for branding consisting of his own surname made the dispute slightly more laughable, but it doesn't appear that was the court's focus in dismissing Charles Wells' objection to the trademark application.

Now the UK Intellectual Property Office (IPO), which rules on trademark disputes, has found in Mr McEwan’s favour after rejecting suggestions the two brands were likely to be mistaken for each other. In a written ruling, trademark hearing officer George Salthouse said: “The average consumer is well versed in discriminating between individual’s names, particularly a surname and a forename and surname. I accept the mark in suit may bring the opponent’s mark to mind, but I do not believe it will form a link that would affect the consumers’ economic behaviour or damage the opponents’ mark by tarnishing or blurring.”

The only way that statement makes sense is if the court has faith that the buying public for whisky will differentiate it from beer. Which, you know, of course they will. People who are regular buyers of whisky are complete snobs about it. I know this, because I am one. It's quite refreshing to see a court take the actual lack of confusion into account in a trademark dispute, rather than falling back on facile declarations of overly-broad marketplaces.

Filed Under: trademark, uk, whisky

DailyDirt: Beverage Marketing At Its Highest... Altitudes?

from the urls-we-dig-up dept

Putting all sorts of things into space to see how they'll react in a micro-gravity environment has been done for decades now. Sometimes, it's really unpredictable what exactly will happen to stuff -- eg. will seeds exposed to space grow differently? But some things are not really too consequential. Do whisky drinkers really care if their favorite beverages are aged in space? Are astronauts allowed to get drunk on the International Space Station?

• Ardbeg Scottish whisky aged in space for 3 years has been tasted (finally!) by human beings, and it looks like space-aged whisky is somewhat nasty. Lots of fancy adjectives were used to qualitatively describe this whisky that we mentioned 3 years ago, but the aftertaste was "intense and long, with hints of wood, antiseptic lozenges and rubbery smoke" -- and "rubbery smoke" doesn't sound too appealing. [url]
• American whiskeys and bourbons have a history of tricky marketing tactics. Aging these alcoholic beverages or producing them in smaller quantities doesn't necessarily make them any better, and the name on the labels might not actually mean much beyond a "doing business as" moniker. [url]
• The Japanese distillery Suntory will be sending its own whisky to the International Space Station to "observe" the effects of aging its product in space. This probably isn't about the scientific exploration of whisky chemistry as much as it is marketing, but maybe someday, we'll see more ads with Bill Murray shot in space with more intensity. [url]

After you've finished checking out those links, take a look at our Daily Deals for cool gadgets and other awesome stuff.

Filed Under: advertising, bill murray, bourbon, international space station, iss, marketing, microgravity, space, taste, whiskey, whisky
Companies: ardbeg, suntory

DailyDirt: Cheaper Satellites Are Blasting Off

from the urls-we-dig-up dept

SpaceX's Falcon 9 rocket has recently demonstrated its capabilities by successfully docking with the International Space Station. It's the first example of a private company achieving this feat, and it's paving the way for more private space ventures. Cheaper space missions are becoming more commonplace, and here are just a few more experimental projects that are aiming to change the space race by creating a multitude of mini space missions.

• Nanoracks reportedly has the first commercial cargo flown in a SpaceX Dragon capsule. One of the commercial experiments includes components of Ardbeg whisky to determine how whisky ages in zero gravity. Maybe there are faster ways to produce aged whisky... in space? [url]
• Interplanetary CubeSats could dramatically lower the costs of space exploration in our solar system. Low Earth orbit CubeSats have already made affordable satellite experiments possible for universities as well as government space agencies, so floating a few of these satellites out beyond Earth's reach could open up even more possibilities. [url]
• The CleanSpace One project is planning to launch satellites that can clear out space debris in the Earth's orbit. Around 16,000 objects (>10 cm in diameter) are currently cluttering up space right above the Earth, and finding a good way to clean up this space pollution could make other space missions less risky. [url]
• To discover more links on space exploration, check out what's floating around in StumbleUpon universe. [url]  

By the way, StumbleUpon can also recommend some good Techdirt articles, too.

Filed Under: cleanspace one, cubesats, low earth orbit, rockets, satellites, space exploration, space junk, whisky
Companies: ardbeg, nanoracks, spacex

Morons In A Hurry Can Raise Their Glasses Of Glenora Whisky Proudly Again

from the don't-spill-it dept

What is it with the silly food related trademark battles we keep hearing about lately? First there were Idaho potatoes, then lettuce, and now whisky. You see, the Scotch Whisky Association takes these things seriously. Already you can't call something Scotch (or Scotch Whisky) unless it was produced at a distillery in Scotland, but now it was trying to expand its control over the word "Glen" as well. There are, of course, a few very well known Scottish distilleries using "Glen" such as Glenlivet or Glenfiddich. So what was the problem? Well, in Glenville, Nova Scotia, Canada there's a whisky distillery called Glenora, who makes a single malt whisky under the name Glen Breton Rare whisky. The Scottish Whisky Association insisted this was a problem and confusing, even though the label on Glen Breton states quite clearly: "Canada's Only Single Malt Whisky." I think even the traditional "moron in a hurry" would recognize that it's from Canada, not Scotland.

It appears that some Canadian judges agree -- and have refused to hear the Scottish Whisky makers' appeal, meaning Glenora gets to keep the name. Of course, the other bit of irony, as pointed out by the anonymous person who submitted this: Nova Scotia actually means New Scotland.

Filed Under: canada, glen breton, glenora, scotch, whisky
Companies: glenora