Ninth Circuit frees Jack Daniel’s chew toy spoof from trademark doghouse

VIP Products, the manufacturer of a dog toy parodying Jack Daniel's, has been in litigation with the whiskey company over its trademarks since 2014. A bottle of Jack Daniel's Tennessee Whiskey is displayed next to a Bad Spaniels dog toy in Arlington, Va., on Nov. 20, 2022. (AP Photo/Jessica Gresko, file) (CN) — In an opinion that opens with the classic joke setup about a man walking into a bar, the Ninth Circuit lifted a lower court’s injunction Tuesday against the manufacturer of the Bad Spaniels dog toy that spoofs the Jack Daniel’s whiskey brand. “Neither Bad Spaniels nor the toy’s trade dress facially tarnished Jack Daniel’s corresponding famous marks, and neither was portrayed in an unwholesome or unsavory context that was likely to tarnish the reputation of the famous marks,” wrote U.S. Circuit Judge Miland Smith Jr., a George W. Bush appointee, in a 28-page opinion . VIP first sued Jack Daniel’s for declaratory relief in 2014 after the whiskey maker sent VIP Products a cease and desist, claiming the Bad Spaniels dog toy violated Jack Daniel’s trademark. Shaped like a rectangular booze bottle, Bad Spaniels “Old No. 2 On Your Tennessee Carpet” promises to contain “43% poo by volume” and to be “100% smelly." The maker of Jack Daniel’s Old No. 7 Tennessee Whiskey did not appreciate the jokes. A federal judge initially rejected VIP’s First Amendment arguments, but a unanimous panel on the Ninth Circuit reversed, sending the case back to the lower court. When VIP prevailed on remand and again at the appeals court, Jack Daniel’s brought the case to the Supreme Court in 2023. The justices didn’t decide whether the toy infringed on the whiskey brand’s trademark but agreed that the Ninth Circuit went too far to shield its maker from trademark infringement claims, remanding the case to the lower court . The trial court then ruled in favor of Jack Daniel’s, enjoining VIP Products from selling the toy. VIP Products appealed , arguing its name wasn’t enough to evoke the name of the Tennessee whiskey giant under federal copyright law. The Ninth Circuit agreed, citing the law’s narrow rubric for evaluating reputational harm. To prevail, Smith explained, Jack Daniel’s needed to establish that each contested element on the Bad Spaniels toy was similar enough to its famous design to cause reputational harm. In court, however, the liquor giant focused on the toy’s name and shape, letting the reference to “Old No. 7” drop to the wayside. During a 2018 bench trial, Jack Daniel’s relied on an expert witness who testified that any association of excrement would be detrimental to a food brand. The appellate court, however, was unpersuaded. The expert, Smith wrote, “did not conduct any studies on Bad Spaniels specifically, relying solely on generic consumer psychology research to conclude that VIP’s introduction of Bad Spaniels into the marketplace resulted in reputational harm to Jack Daniel’s trademarks and trade dress.’’ The three-judge panel again remanded the case to the lower court with instructions to enter judgment in favor of VIP, opening the door for the chew toy’s return. Senior U.S. Circuit Judge Marsha Berzon, appointed by Bill Clinton, and Senior U.S. Circuit Judge Andrew Hurwitz, appointed by Barack Obama, signed onto the opinion. Attorney Matthew Nicholson of Williams & Connolly in D.C. represented Jack Daniel’s on appeal but did not respond to an inquiry for comment. VIP Products was represented by Bennett Cooper, who practices with Dickinson Wright in Phoenix and did not respond to a request for comment. Our weekly newsletter Closing Arguments offers the latest about ongoing trials, major litigation and rulings in courthouses around the U.S. and the world, while the monthly Under the Lights dishes the legal dirt from Hollywood, sports, Big Tech and the arts.