"Using a Trademark as a Trademark Is Not Freedom of Expression"
U.S. Supreme Court Ruling... Ends with Victory for Whiskey Company
A trademark dispute between the famous American whiskey company Jack Daniel's and a dog toy company that parodied Jack Daniel's has ended in victory for the whiskey company after more than 10 years.
Earlier, toy manufacturer VIP created a dog toy called "Bad Spaniels" in 2013, modeled after the bottle shape of "Old No. 7 Black Label Tennessee Whiskey."
The toy was made to resemble a brown bottle with a black label, similar to the Jack Daniel's whiskey bottle. The wording also parodied the text on the whiskey bottle. The label featured humorous phrases such as "Old No. 2," "Poop 43%," and "100% Smelly."
The tag attached to the toy also stated "Not affiliated with Jack Daniel's," but this alone was not enough to prevent the lawsuit.
On the 8th (local time), according to foreign media including CNN, the U.S. Supreme Court unanimously dismissed a lower court ruling that the dog toy company’s parody of the Jack Daniel's whiskey bottle was protected under the First Amendment's "freedom of expression."
In the opinion written by Justice Elena Kagan, the Supreme Court emphasized, "This decision applies only to this case," and "It does not determine the scope of the 'non-commercial use exception' in trademark disputes."
She added, "Parodying another product or referring to it in a different way does not automatically qualify as non-commercial use," and "A trademark infringer using another company's trademark as their own is not protected by the First Amendment."
Jack Daniel's issued a statement saying, "We are satisfied with the Supreme Court's decision recognizing the rights of trademark owners," and "We will continue to strive to protect our trademark rights."
Previously, in 2014, Jack Daniel's filed a lawsuit claiming that this product violated trademark law and obtained a sales ban order from the court. Jack Daniel's argued that consumers could confuse the toy, which references excrement, with their product and that it damages their long-standing reputation.
VIP opposed this. In 2020, the Ninth Circuit Court of Appeals in San Francisco overturned the previous ruling, finding that VIP used the trademark non-commercially and that the humorous creation was protected under the First Amendment, thus ruling in favor of VIP.
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