The dog toy closely resembles a Jack Daniel’s bottle. The typography is similar. But Bad Spaniels Old No. 2 on your Tennessee Carpet isn’t a whiskey. It’s a dog toy that resembles the classic Jack Daniel’s Old No. 2 bottle and label.
At least that’s the argument Jack Daniel’s presented in a successful lawsuit seeking to enjoin production of the dog toy. The district court agreed and found that 29% of surveyed consumers woould likely be confused as to whether Jack Daniel’s endorses the “Bad Spaniels Dog Toy” produced by VIP Products LLC. It barred production or sale of the dog toy, finding the dog toys could tarnish the Jack Daniel’s brand and suggest associations between whiskey and children.
But the 9th Circuit disagreed, holding that adding scatological humor to an infringing consumer good entitles the dog toy to broad protection from infringement liability.
Jack Daniel’s appealed the 9th Circuit decision to the U.S. Supreme Court, and six trade associations have just filed an amicus brief supporting Jack Daniel’s, arguing the decision “has no limiting principle that would prevent the extension of its reasoning to jokes about underage drinking, excessive consumption, or drunk driving. From children’s toys to drinking game kits to automobile accessories, anyone making an infringing product need only claim some element of juvenile humor to gain sweeping immunity from trademark infringement or dilution liability.”
The six trade associations — American Craft Spirits Association, American Distilled Spirits Alliance, Beer Institute, Brewers Association, Distilled Spirits Council of the U.S., Wine Institute — focused much of their argument on the threat the 9th Circuit decision poses to responsible advertising self-regulation, and notes that both the Beer Institute code and the Distilled Spirits Council’s code prohibits use of brand identification, including logos, trademaarks or names on clothing, toys, games, game equipment or other items intended for use primarily by persons below the legal purchase age.
“The system of industry self-regulation on advertising can only succeed where industry members have effective control over the use of their trademarks and trade dress,” the amicus brief states.
In urging the Supreme Court to grant the petition for certiorari and reverse the decision, the industry groups made the case in their amicus brief that the 9th Circuit’s decision “creates a legally unjustified problem of national scope for the entire alcohol beverage industry and its efforts to ensure that trademarks associated with the industry do not appear in irresponsible advertisements or consumer products.”
“The alcohol beverage industry has long worked to ensure that our products are advertised in a responsible manner,” said Courtney Armour, DISCUS Chief Legal Officer. “The 9th Circuit opinion threatens to undermine those efforts by inviting trademark infringers to pirate famous alcohol beverage brands so long as they add a humorous twist. This case involves dog toys, but it does not take much imagination to see how this could lead to ‘humorous’ products that encourage binge drinking and blacking out, underage drinking, or drunk driving. The industry must have control over their trademarks for responsible advertising initiatives to succeed.”
The brief stated, “[t]he alcohol beverage industry has invested extensive resources in combatting irresponsible alcohol use. This work includes industry self-regulation of alcohol beverage advertising, which strictly limits the use of trademarks associated with alcohol beverage brands to ensure that all advertising using those marks promotes responsible adult consumption and does not improperly appeal to minors.”
The brief explained that the 9th Circuit’s holdings “open the door to any number of allegedly humorous infringements of famous trademarks associated with alcohol beverages,” and includes “no limiting principle that would prevent the extension of its reasoning to jokes about underage drinking, excessive consumption, or drunk driving. If infringing uses of famous marks associated with alcohol beverages gain broad exemptions from the Lanham Act, then rampant infringement will make leading producers’ social responsibility meaningless by allowing parties outside of the industry’s self-regulatory system to use trademarks and trade dress associated with the industry to promote irresponsible drinking.”
The group underscored in the brief the beverage alcohol industry’s longstanding commitment to responsible advertising and effective self-regulation through their respective voluntary advertising and marketing codes and code review boards.
“These boards have successfully promoted compliance with the industry codes within the industry, and could even expel members from the industry associations in serious cases,” the brief stated. “But they have no ability to address the use of industry participants’ trademarks and trade dress in irresponsible ways by individuals and companies outside of the alcohol beverage industry, and non-members have no incentives to abide by association standards. Given the limited legal authority of the review boards, the system of industry self-regulation on advertising can only succeed where industry members have effective control over the use of their trademarks and trade dress.”
They added, “[t]he dissonance between the sophisticated, adult image that a brand like Jack Daniel’s invests in and the childishness of the infringing use here not only harms Jack Daniel’s commercial interests, but tarnishes a prominent whiskey brand with the exact associations that the entire industry has worked hard to eliminate from its advertising.”