VIP Products manufactured and sold a squeaky dog toy called “Bad Spaniels.” The toy closely resembled a Jack Daniel’s whiskey brand bottle. The makers of Jack Daniel’s alleged that the product infringed on their trademarks, while VIP Products argued that the toy was a parody protected by the First Amendment.
This dispute is not uncommon: First Amendment-protected speech clashes with trademark law. When does parody qualify as protected speech, and when does it cross the line into infringement?
Case Facts and Procedure
The Bad Spaniels Silly Squeaker dog toy mimicked the shape and overall appearance of a Jack Daniel’s whiskey bottle. Several design elements distinguished the toy from the original bottle, including a cartoon dog image in the center of the label. The traditional product description, “Old No. 7 Brand Tennessee Sour Mash Whiskey,” is replaced with the phrase “The Old No. 2 on Your Tennessee Carpet.” Where the whiskey bottle lists its alcohol content as 43 percent, the toy claims to be “40% poo by vol.” The packaging also included a disclaimer stating that the product is “not affiliated with Jack Daniel Distillery.”
Despite these modifications, Jack Daniel’s Properties, LLC filed a federal trademark infringement lawsuit in Arizona against VIP Products LLC. The whiskey maker argued that the dog toy copied the distinctive bottle design and trade dress associated with its brand.
The district court agreed with Jack Daniel’s. The court concluded that the bottle’s distinctive design and non-functional trade dress were entitled to trademark protection, and that VIP Products had infringed on those rights.
On appeal, a three-judge panel of the Ninth US Circuit Court of Appeals reached a different outcome. According to the court, these “lighthearted, dog-related alterations” distinguished the toy from the whiskey bottle in a way that prevented a finding of trademark infringement or dilution. The court also vacated the trial court’s injunction that had prohibited the manufacture and sale of the toy.
Is a Parody Protected Speech or Trademark Infringement?
When petitioning the United States Supreme Court for review, attorneys for Jack Daniel’s argued that the toy damaged the brand by encouraging consumers to associate the whiskey with excrement. The company also alleged that consumers unfamiliar with the brand could form negative impressions of the brand based on the parody product.
Trade associations supported the petition and argued that the appellate court’s decision could weaken trademark protections more broadly. Some organizations expressed concern that allowing similar products could undermine efforts to promote responsible alcohol consumption. The American Intellectual Property Law Association submitted a petition urging the Supreme Court to review the legal standards governing parody and artistic expression in trademark cases.
Likelihood of Confusion, Dilution, and the Role of Consumer Surveys
Trademark disputes often require evidence of consumer perceptions. Courts examine what consumers believe regarding the origin, affiliation, and sponsorship of the at-issue trademark or brand. Consumer surveys are commonly used to provide empirical evidence addressing these questions.
Properly conducted likelihood-of-confusion surveys provide reliable measures of whether consumers mistakenly believe that a parody product is associated with the trademark owner. Similarly, a likelihood-of-dilution survey may also be relevant if a famous brand claims that association with another brand harms its reputation or weakens its distinctiveness. Survey research could examine whether consumers’ perceptions of the Jack Daniel’s brand are negatively affected by the dog toy and its messaging.
Consumer Survey Research in Trademark Litigation
Consumer survey research in trademark disputes enables experts to measure whether confusion exists, whether brand associations are affected, and whether consumers interpret a parody as commentary rather than a commercial product associated with the original brand. Regardless of the legal framework ultimately applied, consumer perception is likely to remain central to these disputes.
IMS Legal Strategies designs and conducts consumer surveys in trademark, advertising, and intellectual property litigation. These experts frequently assist counsel in evaluating the likelihood of confusion, dilution, and other issues involving consumer interpretation. Contact IMS Legal Strategies for consumer perception research.
