U.S. Supreme Court justices are looking for a way to resolve whether a dog toy company violated trademark laws or expressed its First Amendment rights when creating a chew toy shaped and labeled to look like a Jack Daniel’s whiskey bottle.
Reuters reported that the justices listened to arguments from Louisville, Kentucky-based Jack Daniel’s Properties Inc, owned by Brown-Forman Corp. on Wednesday.
The Tennessee Whiskey company is appealing a lower court’s ruling that the Bad Spaniels vinyl chew toy sold by Phoenix-based VIP Products LLC falls under protection of the First Amendment as an "expressive" piece of work.
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Instead, Jack Daniel’s claims that VIP Products LLC’s product constitutes a trademark infringement.
In this case, VIP products created a dog chew toy with a label reading "the Old No. 2, on your Tennessee Carpet," parodying the label that appears on the whiskey bottle that reads "Old No. 7" and "Tennessee Whiskey."
Reuters said some of the justices were hesitant to get rid of a longstanding legal test called the Rogers test, which stems from a dispute between actress Ginger Rogers and film director Federico Fellini.
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The test allows artists to legally use a company’s trademark if it has artistic relevance to their work and does not mislead customers about its source.
In 1989, Rogers sued over a Fellini movie, and this week, justices were mixed on whether the decision in the Rogers test struck the right balance between free speech and a company’s interest in protecting its image.
"I'm concerned about the First Amendment implications of your position," conservative Justice Samuel Alito reportedly said. "Could any reasonable person think that Jack Daniel's had approved this use of the mark?"
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Justice Ketanji Brown Jackson questioned whether the Rogers test was too lenient of expressive works that could cause confusion and asked if products that could confuse consumers should undergo a more rigorous judicial test or be allowed to sidestep that test.
"It sounds like what you're doing is saying when you're dealing with an expressive work, we get a pass under the Lanham Act," Jackson said. The Lanham Act governs trademark law, referring to the federal statute that governs trademark law.
A Biden administration lawyer asked the Supreme Court justices to drop the Rogers test and use a multi-factor, more rigorous test used in trademark-infringement cases that looks at whether market confusion could arise out of creative acts.
Reuters said the whiskey company contested a finding from the 9th U.S. Circuit Court of Appeals in San Francisco that VIP Product’s use of the trademark was noncommercial. Its reasoning was that the trademark was used to sell dog toys and convey a humorous message, so it did not tarnish the Jack Daniel’s image.
Justice Elena Kagan was skeptical and said the dog toy was a standard commercial product.
"This is not a political T-shirt, it’s not a film, it’s not an artistic photograph," she said. "You’re using it as a source identifier."
The justices are expected to decide on the case by the end of June.
Jack Daniel’s Properties Inc., Brown-Forman Corp., and VIP Products LLC did not respond to requests for comment.
Reuters contributed to this report.
