“Debbie Does Dallas.” Shirts with drunk donkeys and elephants. Toilet humor.
The Supreme Court on Wednesday got a rare dose of humor as the justices took under consideration a request by Jack Daniel’s to hold a company liable under a federal trademark law for producing poop-themed dog toys that spoof its whiskey bottles.
The company, VIP Products LLC, replaced the famed “Jack Daniel’s” typography with “Bad Spaniels,” also swapping “Old No. 7 brand” and “Tennessee Sour Mash Whiskey” with “The Old No. 2 on your Tennessee Carpet” as they parodied the famed brand into a chewy dog toy.
The dispute brought a seldom-seen lighthearted atmosphere to the courtroom during oral arguments, with the justices cracking jokes and posing entertaining hypotheticals as they weighed if humor gives the toys heightened First Amendment protections that block the trademark claims.
“The parody is to make fun of marks that take themselves seriously,” argued Bennett Cooper, who represented VIP Products and asserted their dog toys were works of artistic expression subject to free-speech protections, as lower courts have found.
“I mean you say that, but you make fun of a lot of marks: Doggie Walker, Dos Perros, Smella R-Crotches, Canine Cola, Mountain Drool. Are all of these companies taking themselves too seriously?” Justice Elena Kagan responded.
Sitting a few feet away, Justice Clarence Thomas chuckled as Kagan ran through the company’s product list, which parody alcoholic and soft drink brands like Dos Equis, Coca-Cola and Mountain Dew.
Trademark cases typically involve an analysis of whether consumers are likely to be confused by a product’s use of a protected mark.
But VIP Products wants the justices to uphold a ruling that found the company wasn’t liable under the “Rogers test.”
Many lower courts have adopted the test, which balances trademark claims against works of creative expression with First Amendment protections. But the high court has never endorsed it, making the case the justices’ first major confrontation with the Rogers test.
The justices are also grappling with the lower court’s ruling that VIP Products is protected from Jack Daniel’s trademark dilution claims because the use of the mark was noncommercial. The court had ruled that the company not only was selling a dog toy, it was also conveying a “humorous message.”
Jack Daniel’s, which was backed by the Justice Department, contended that upholding the lower ruling would render the nation’s primary federal trademark law “virtually useless,” listing off in court filings several examples the company says would tarnish popular brands.
Lisa Blatt, who represented the whisky maker, referenced the movie “Debbie Does Dallas” and a past case involving Barbie dolls.
“Could any reasonable person think that Jack Daniels had approved this use of the mark?” asked Justice Samuel Alito, who said he was concerned about the First Amendment implications of Jack Daniel’s position.
Blatt indicated yes before suggesting Alito had “hindsight bias.”
“It’s just a little rich for people who are at your level to say that you know what the average purchasing public thinks about all kinds of female products that you don’t know anything about or dog toys that you might not know anything about,” Blatt said.
Alito jokingly quipped back, “I had a dog, I know something about dogs,”
Justice Ketanji Brown Jackson expressed concerns the other way, stating, “people can be totally confused, but we then just scream First Amendment and we get out of Lanham Act liability. And I don’t see that in the statute, and that’s what I’m worried about.”
Blatt throughout her argument stressed the importance of using consumer survey data to gauge consumer confusion in trademark cases. Jack Daniel’s survey expert in earlier proceedings determined that 29 percent of potential customers were likely to be confused about the company’s affiliation with “Bad Spaniels.”
Cooper, representing the dog-toy maker, later shot back that “the First Amendment is not a game show where the result is, ‘survey says I’m confused, stop talking.’”
Justice Sotomayor questioned Blatt if a political party armed with survey data could take someone to trial for selling t-shirts on Amazon that show a drunk donkey or elephant — which are associated with the Democratic and Republican parties — accompanied by the slogan, “it’s time to sober up America.”
“That’s funny, your example. Gonna give you that,” Blatt responded.
A decision in the case, Jack Daniels Properties, Inc. v. VIP Products LLC, is expected by late June.