A dog chew toy that references the whiskey brand has sparked a dispute over trademarks and creative expressions in the US.
The United States Supreme Court has heard arguments in a case pitting whiskey maker Jack Daniel’s against a dog accessories company, with implications for the balance between trademark protection and creative expression.
On Wednesday, the nine-judge court weighed the legal implications of the case, which centered on the sale of a dog chew toy resembling the whiskey company’s iconic black-labeled bottle.
Jack Daniel’s is appealing a lower court ruling that ruled that the colorful chew toy “Bad Spaniels” is protected as “expressive work”. In its design, the chew toy swaps Jack Daniel’s “Old No. 7” branding for “Old No. 2 on Your Tennessee Carpet,” a reference to stool.
“Could any reasonable person think that Jack Daniel’s had approved this use of the mark?” asked conservative judge Samuel Alito.
Attorneys for the whiskey company are asking the court to abolish a legal test that would allow the creators of parody items to avoid costly lawsuits under the First Amendment to the US Constitution, which protects freedom of speech and expression.
Commonly known as the “Rogers Test”, a 1989 legal precedent allows artists to use someone else’s trademark when it is artistically relevant and would not mislead consumers as to the provenance of their work.
That precedent was cited in an earlier legal victory for the chew toy’s maker, VIP Products. In 2020, the 9th Circuit Court of Appeals in San Francisco, California ruled in favor of the company, concluding that the chew toy was an “expressive work” and thus may be protected under the First Amendment.
To decide that point, the 9th Circuit sent the case to a federal judge in Arizona who applied the “Rogers test” – named after a legal dispute between actress Ginger Rogers and director Federico Fellini, who referred to Rogers’ name in a movie which he wrote.
Jack Daniel’s is appealing the lower court decision, claiming VIP Products should be held liable for damaging its product by tarnishing its iconic trademark.
Industry groups have thrown themselves behind the whiskey maker, saying the case is an important test of US companies’ ability to control the reputation of their products.
In contrast, a group of 2,300 authors have argued that a decision in favor of the powerful liquor company would have a “catastrophic chilling effect” on creative expression.
A ruling is expected at the end of June and the administration of US President Joe Biden supports Jack Daniel’s in its appeal.
The court heard arguments in an earlier trademark litigation case last October involving a painting by famed artist Andy Warhol that referenced a photo of famed singer and songwriter Prince.
Celebrity photographer Lynn Goldsmith eventually sued Warhol’s estate for copyright infringement. The Supreme Court has yet to rule on that dispute.
