Creative expression through the sale of parody-based dog toys has recently caught the attention of the United States Supreme Court. On March 22, 2023, the Supreme Court listened to arguments to decide whether dog toys modeled after well-known alcohol brands should be considered protected speech, warranting an exception to traditional trademark protections. The issue at hand is whether dog toy company VIP Products infringed on whiskey company Jack Daniel’s trademark rights when it created and sold a squeaking dog toy that mimicked Jack Daniel’s signature whiskey bottle. During litigation, the Supreme Court will analyze whether VIP Product’s replacement of Jack Daniel’s usual bottle copy “Old No. 7 Brand Tennessee Whiskey,” with “The Old No. 2 on Your Tennessee Carpet” constituted a sufficient creative expression so as to prohibit claims of trademark infringement.
While the subject matter of the litigation may seem flippant, this case will force the court to take a stance in the ongoing debate between brands seeking to enforce their intellectual property rights and creators who endeavor to generate artistic works protected by the First Amendment.
On Sept. 16, 2014, VIP Products filed a lawsuit seeking declaratory judgment permitting the continued sale of the dog toys parody on Jack Daniels’ most famous whiskey without infringing or diluting the trademark rights of Jack Daniels Properties, Inc. or interfering with trade dress or design of the Jack Daniels bottle. Jack Daniels filed counterclaims against Bad Spaniels for trademark infringement and trademark dilution, requesting a permanent injunction for that would require Bad Spaniels to immediately and forever cease its sales of infringing products.
In recent years, Bad Spaniels has made a successful business out of selling dog toys that parody alcoholic beverage companies and other famous brands that Bad Spaniels claims take themselves too seriously. Bad Spaniels uses designs specifically targeted towards top selling items from each company so that consumers can relate Bad Spaniels’ dog toys to the famous products the toys are modeled after. The issue is whether these dog toys are expressive work protected by the First Amendment or these toys infringe on the Jack Daniels, and potentially other companies’, rights in their intellectual property.
ARE PARODIES PROTECTED SPEECH OR TRADEMARK INFRINGEMENT?
Presently, the Ninth Circuit is working its way through determining whether parodies are expressive work protected by the First Amendment or trademark infringement. Federal Circuits have previously pressed the Supreme Court to answer this question.
Previously, the Ninth Circuit granted a “near blanket protection” for companies like Bad Spaniels to potentially use protected intellectual property under the guise of expressive work protected by the First Amendment. In Jack Daniels v. Bad Spaniels, an Arizona District Court found that Bad Spaniels’ expressive work constituted trademark infringement and trademark dilution and then entered a permanent injunction against Bad Spaniels.
This case poses an interesting intersection between this country’s highly coveted protected property rights in the form of intellectual property and similarly valued First Amendment’s protection on freedom of speech. Beyond having greater implications for intellectual property rights holders and creators, this case clearly will influence the products offered by the dog toy market. A quick Google search for dog toys yields hundreds of results which parody famous alcohol brands, including, “Pawtron Tequila,” “Barkardi,“ “Jamuttson,” “Houndessy,” “Dog Perignon,” and “Mutt and Chandog,” among others. An order prohibiting Bad Spaniels from continuing to sell their product would likely result in a wave of enforcement actions by other well-known brands.
INTELLECTUAL PROPERTY OWNERS CAN STILL PROTECT THEMSELVES
Intellectual property rights will not lose its value, regardless of the outcome of this case. KJK can assist brand owners in refining their intellectual property to minimize instances of infringement, dilution, and trade dress violations by competitors. Additionally, KJK can provide guidance to business owners and content creators on how to use their creative works in commerce, ensuring they steer clear of any claims related to intellectual property infringement, dilution, and trade dress violations.
As the Jack Daniels v. Bad Spaniels case develops, brand owners should monitor the marketplace for potential expressive works or fair use of their intellectual property. Should an expressive work that may rise to the level of infringement be found, brands should put the infringer on notice of the intellectual property rights and demand an immediate cease-and-desist, with a deadline to comply and threat of legal action.
On the other side, business owners or content creators using parody to sell their products should use caution when doing so to protect their operations from being shut down by business owners seeking to enforce intellectual property rights. General disclaimers, which do not reference the parodied-brand by name and alert consumers that the products sold are not affiliated with any other brands, may ease concerns over consumer confusion.