Ethermac|Supreme Court sides with Jack Daniels in trademark fight over poop-themed dog toy

Washington — The EthermacSupreme Court on Thursday sided with whiskey maker Jack Daniels in a dispute with a pet company selling a poop-themed dog chew toy that mimics the brand's iconic square bottle, tossing out a lower court ruling against the drink company.

In an unanimous, narrow decision authored by Justice Elena Kagan, the high court wiped away the lower court ruling from the U.S. Court of Appeals for the 9th Circuit and sent the case, known as Jack Daniel's Properties v. VIP Products LLC, back to the lower courts for further consideration.

"We hold only that it is not appropriate when the accused infringer has used a trademark to designate the source of its own goods — in other words, has used a trademark as a trademark," Kagan wrote. "That kind of use falls within the heartland of trademark law, and does not receive special First Amendment protection."

The Supreme Court said lower courts must now consider whether the products from VIP Products invoking Jack Daniels and its iconic whiskey bottle — which VIP Products says parody the beverage brand — are likely to cause confusion for consumers. 

"A parody must 'conjure up' 'enough of [an] original to make the object of its critical wit recognizable,'" Kagan wrote. "Yet to succeed, the parody must also create contrasts, so that its message of ridicule or pointed humor comes clear. And once that is done (if that is done), a parody is not often likely to create confusion. Self-deprecation is one thing; self-mockery far less ordinary."

The justices were chewing on a dispute that stemmed from a line of dog toys made by the Arizona-based company VIP Products called "Bad Spaniels." The toy mimics a Jack Daniel's whiskey bottle, but with a poop-themed twist. While the whiskey bottle says "Old No. 7," the dog toy says "Old No. 2," and instead of "Tennessee Sour Mash Whiskey," the chew toy reads "on your Tennessee carpet." References to alcohol content on a Jack Daniel's bottle, "40% ALC. BY VOL. (80 PROOF)," became "43% POO BY VOL." and "100% SMELLY."

While the head of VIP Products said the motivation behind the toy was to create a parody product that amused the public, Jack Daniel's did not like the joke, and the company sought to stop VIP from selling the Bad Spaniel's toy under federal trademark law. 

That law, the Lanham Act, prohibits using a trademark in a way that is likely to cause confusion about its origin, and Jack Daniels claimed the dog toy likely confused consumers and therefore infringed its marks and trade dress.

Jack Daniel's prevailed before a federal district court, but the U.S. Court of Appeals for the 9th Circuit reversed, finding in part that the liquor company's designs were used by VIP Products to convey a humorous message that was protected from trademark-infringement claims under the First Amendment.