U.S. Supreme Court to Hear Trademark Infringement Case on Jack Daniel's Parody Product
Toy Maker VIP Says "Humor Not Understood... Freedom of Expression Must Be Protected"
Whether the trademark infringement of a dog toy parodying the whiskey bottle (left) of the American whiskey brand Jack Daniel's will be decided by the Supreme Court. [Image source=AP Yonhap News]
[Asia Economy Reporter Kim Sung-wook] The Supreme Court is set to rule on whether a dog toy parodying the whiskey bottle of the American whiskey brand Jack Daniel's infringes on trademark rights.
According to CNBC and others on the 23rd (local time), VIP, the manufacturer of the toy parodying Jack Daniel's whiskey bottle design, will be heard by the U.S. Supreme Court. Jack Daniel's judged that VIP's dog toy "Bad Spaniels" closely resembles the "Old No. 7 Black Label Tennessee Whiskey" and constitutes trademark infringement. With the Supreme Court deciding to hold a hearing on the trademark infringement lawsuit, Jack Daniel's notified VIP of a court injunction requesting the cessation of product sales.
The toy in question, which Jack Daniel's objects to, has "Speniels" (similar in spelling to "Daniels") written on the front of the whiskey bottle shape, along with a character image of the Spaniel dog breed. Additionally, "Old No. 7" is changed to "Old No. 2," and "Tennessee Whiskey" is altered to "Tennessee Carpet," parodying the pet as "Old No. 2 on the Tennessee Carpet." The alcohol content label is changed to "Poop 43%," accompanied by witty phrases such as "100% smells." The toy is sold online for $17 (about 23,000 KRW).
In 2014, Jack Daniel's filed a lawsuit in the Arizona Federal District Court, viewing the sale of this toy as trademark infringement damaging its reputation. The ruling favored Jack Daniel's. However, in 2020, the Ninth Circuit Court of Appeals in San Francisco overturned the ruling, stating that the toy is a creative work with a "message of humor." The court based its decision on the freedom of expression guaranteed by the First Amendment of the U.S. Constitution. Jack Daniel's criticized this, saying, "Counterfeit manufacturers can now effectively misuse trademarks under the guise of 'humor' at any time."
In response, VIP stated, "Jack Daniel's, while being a leading U.S. liquor company, fails to keep up with the sense of humor shared by everyone else in the U.S." Regarding the upcoming hearing, VIP's attorney Bennett Cooper said, "This is an opportunity for the justices to establish clear standards for parody that balance freedom of expression and trademark rights," adding, "Our case will be an excellent test for creating national standards."
Meanwhile, VIP sells products parodying not only Jack Daniel's but also various liquor, beer, wine, and soda bottles. Parody products include "Stella Arpaw," mimicking the beer manufacturer Stella Artois's bottle design, and "Heine Sniff'n," resembling Heineken. In 2008, Anheuser-Busch, the maker of Budweiser beer, filed a similar lawsuit over VIP's toy named "Burtwiper" and won.
In South Korea, in 2018, The Face Shop collaborated with the American bag brand "My Other Bag" to release cosmetics, leading to a legal battle with Louis Vuitton. My Other Bag is a parody product featuring illustrations of luxury bags like Louis Vuitton on one side of the bag. At that time, the U.S. court ruled in favor of My Other Bag, stating the product qualifies as a parody.
However, in the domestic lawsuit filed by Louis Vuitton against The Face Shop for unfair competition, the court ruled that "the intent to ridicule is not clearly evident, and it fails to convey a special critical meaning," thus constituting unfair competition.
© The Asia Business Daily(www.asiae.co.kr). All rights reserved.
