Six alcohol trade groups have filed a legal document urging the US Supreme Court to reverse a trademark ruling regarding a dog toy that replicates a bottle of Jack Daniel’s, claiming it would promote irresponsible drinking.
In 2018, Jack Daniel’s launched a lawsuit against dog toy maker VIP Products over its Bad Spaniel’s Old No.2 on your Tennessee Carpet product. The dog toy replicates a Jack Daniel’s bottle with black labels and white text and carries the wording ‘The Old No.2 on your Tennessee Carpet’.
The District Court ruled in favour of Jack Daniel’s over the likelihood that the infringing product would result in consumer confusion and that the company’s use of “juvenile bathroom humour” would tarnish the whiskey brand.
However, in March 2020, the US Court of Appeals for the Ninth Circuit ruled that the toys were “expressive” works that carried a humorous message. As such, its use of similar trademarks and branding to Jack Daniel’s was protected by the First Amendment.
Six trade associations have now filed an amicus brief asking the Supreme Court to grant the request for certiorari, a judicial review of the decision, and reverse the verdict. An amicus brief is a legal document filed in court cases by those with a strong interest in the subject matter. The court must then decide whether to consider the brief.
The amicus brief was filed by the Distilled Spirits Council of the US (Discus), American Distilled Spirits Alliance, American Craft Spirits Association, Wine Institute, Beer Institute, and the Brewers Association.
The brief said the ruling “tarnishes” Jack Daniel’s reputation as a well-known whiskey brand using the “exact associations that the entire industry has worked hard to eliminate from its advertising”.
‘Legally unjustified problem’
The groups said in the brief that the Ninth Circuit’s decision “creates a legally unjustified problem” for the alcohol industry and its efforts to ensure that any associated trademarks do not appear in “irresponsible” advertisements or consumer products.
The trade associations noted that the industry has worked to combat irresponsible alcohol use through self-regulation of alcohol advertising, including strict limits on trademarks associated with alcohol brands to ensure they do not appeal to children.
“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 Ninth 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.”
In addition, the brief noted that the ruling “opens the door to any number of allegedly humorous infringements of famous trademarks associated with alcohol beverages”.
If the Lanham Act continues to allow exemptions in such cases “then rampant infringement will make leading producers’ social responsibility meaningless”, the brief said.
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Author: Nicola Carruthers