NEW and FIRST: Forget What You've Heard, Jack Daniel's Is Ready To Tell U.S. Supreme Court Justices: "Alcohol and TOYS Don't Mix"; Arizona-Based Case (READ Brief)

UPDATE, 6/8, 7:30am: 

The U.S. Supreme Court ruled unanimously against an Arizona-based novelty dog toy company this morning, finding that its squeak toy mimicing Jack Daniel's iconic bottle is not automatically protected as a "parody".

Justice Elena Kagan wrote the opinion (complete with pictures), and found that VIP Products used much of the whiskey's iconic imagery (bottle, lettering, etc) as its own marks, and thus the courts should not use a test ("the Rogers test") which puts the burden on the established trademark holder.

A parody must “conjure up” “enough of [an] original to make the object of its critical wit recognizable.” 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. So although VIP’s effort to ridicule Jack Daniel’s does not justify use of the Rogers test, it may make a difference in the standard trademark analysis. Consistent with our ordinary practice, we remand that issue to the courts below."

Kagan mercifully kept the joke attempts to a minimum, although she began the opinion with this line: "This case is about dog toys and whiskey, two items seldom appearing in the same sentence."

 

 

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ORIGINAL ARTICLE, 3/10: "NEW and FIRST: Forget What You've Heard, Jack Daniel's Is Ready To Tell U.S. Supreme Court Justices: "Alcohol and TOYS Don't Mix"; Arizona-Based Case (READ Brief)"

Forget what you've learned in the past. In its years-long quest to shut down an Arizona-based company's dog squeaker, Jack Daniel's gave a scary message to the U.S. Supreme Court today:

"...alcohol and toys don’t mix well, and the same is true for beverages and excrement. The next case could involve more troubling combinations— food and poison, cartoon characters and pornography, children’s toys and illegal drugs, and so on."

Jack Daniel's Properties and Arizona-based VIP Products will present oral arguments to the Justices in less than two weeks, about whether the "Bad Spaniels" squeak toy and other "humorous uses" of another's trademark is subject to the usual "likelihood-of-confusion analysis". 

Expect at least some of the Justices and at least one attorney to try to pun their way into their oral arguments (or questions), as Jack's attorneys (including one Phoenix attorney) have - inadvertently or not - done.

The case began in Arizona's U.S. District Court more than 6 years ago. (We have commented on it at least once since.) And, this is actually the second time Jack has asked the Supreme Court to reverse the lower courts - the Justices declined in 2021, prompting further litigation.

This time around, the Justices have agreed to look at the likelihood-of-confusion analysis and the lower court's finding that VIP's "humorous use of another's mark as one's own on a commercial product is "noncommercial'...thus barring as a matter of law a claim of dilution by tarnishment".

(I may be alone on this, but buying the "Bad Spaniels" toy for my non-spaniel dogs would make me more likely than I already am to enjoy my Jack Daniels.)

Other less-humored brands - including Campbell's Soup and Levi Strauss - have weighed in in support of Jack, and law professors around the country have filed friend of the court briefs on - as you might expect - both sides of the issue.

Tune in March 22 for the oral arguments, with a decision to follow. (Do not expect a squeaky toy to replace the gavel, however.) And, if you are so inclined, I recommend the rest of Jack's introductory portion of today's Reply Brief, below.

"AZ Law" includes articles, commentaries and updates about opinions from the Arizona Supreme Court, U.S. Supreme Court, as well as trial and appellate courts, etc. AZ Law is founded by Phoenix attorney Paul Weich, and joins Arizona's Politics on the internet. 

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