A dog chew toy that references the whiskey brand has sparked a dispute over trademarks and creative expression in the US.
The United States Supreme Court has heard arguments in a case pitting the whiskey maker Jack Daniel’s against a dog accessory company, with implications for the balance between trademark protections and creative expression.
On Wednesday, the nine-justice bench weighed the legal implications of the case, which focused on the sale of a dog chew toy that resembles the whiskey company’s iconic black-label bottle.
Jack Daniel’s is appealing a ruling by a lower court that found the colourful “Bad Spaniels” chew toy 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 defecation.
“Could any reasonable person think that Jack Daniel’s had approved this use of the mark?” asked conservative Justice Samuel Alito.
Lawyers for the whiskey company are requesting that the court discard a legal test that allows the makers of parody items to avoid costly lawsuits under the US Constitution’s First Amendment, which protects free speech and expression.
Commonly known as the “Rogers test”, a legal precedent set in 1989 allows artists to use someone else’s trademark when doing so is artistically relevant and would not mislead consumers about the origin of their work.
That precedent was cited in a previous legal victory for the chew toy’s maker, VIP Products. In 2020, the 9th Circuit Court of Appeals in San Francisco, California, ruled in favour of the company, concluding that the chew toy was an “expressive work” and thus potentially 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 for a legal dispute between actress Ginger Rogers and director Federico Fellini, who referenced Rogers’s name in a film he wrote.
Jack Daniel’s is appealing the lower court’s decision, claiming that VIP Products should be held liable for damaging its product by tarnishing its iconic trademark.
Industry groups have thrown their weight behind the whiskey producer, stating that the case represents a key test of the ability of US corporations to control the reputation of their products.
A group of 2,300 authors, on the other hand, have argued that ruling in favour of the powerful liquor company would have a “catastrophic chilling effect” on creative expression.
A ruling is expected by the end of June, and the administration of US President Joe Biden has supported Jack Daniel’s in its appeal.
The Court heard arguments in a previous case involving trademark disputes last October, which involved a painting by the famous artist Andy Warhol, which referenced a photograph of the famous singer and songwriter Prince.
Celebrity photographer Lynn Goldsmith ultimately sued Warhol’s estate for copyright infringement. The Supreme Court has yet to render a decision in that dispute.