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‘Dog excrement,’ ‘Barbie Girl,’ and Kagan’s liquor cabinet take center stage in Jack Daniel’s SCOTUS ruling that somehow united Sotomayor and Alito


Standing from left, Associate Justice Elena Kagan, Associate Justice Samuel Alito Jr., Associate Justice Sonia Sotomayor.  (AP Photo/J. Scott Applewhite)

The Supreme Court’s unanimous decision in favor of spirits giant Jack Daniel’s on Thursday brought a number of rarities: references to dog poop, forays into a justice’s liquor cabinet, and a concurrence among some of the high court’s least likely bedfellows.

As Justice Elena Kagan recounted in her majority opinion, Jack Daniel’s argued that Bad Spaniels, the maker of a line of dog toys, “had diluted [Jack Daniel’s trademarks] by associating the famed whiskey with, well, dog excrement.” All nine justices found that the toy company’s use of the Jack Daniel’s brand, though meant as a parody, is nevertheless commercial usage subject to trademark law.

Kagan explained that legal protections for trademarks “benefit consumers and producers alike,” because logos help consumers choose the goods and services they want while avoiding those they do not. The federal Lanham Act protects such trademarks from unauthorized use as well as from dilution.

In likely the only Supreme Court opinion to mention dog excrement, Kagan’s jocular opinion also included a rare joke along with a graphic of Jack Daniel’s Tennessee Sour Mash Whiskey.

“Recall what the bottle looks like (or better yet, retrieve a bottle from wherever you keep liquor; it’s probably there),” Kagan quipped, perhaps offering readers a glimpse into the contents of her own liquor cabinet.

image via Supreme Court documents.

Defendant VIP Products has a dog toy line called “Silly Squeakers,” which parodies popular beverage brands, explained Kagan, who then listed, “Dos Perros,” “Smella Arpaw,” and “Doggie Walker” as examples.

The Court said that despite the product’s label disclaimer — “This product is not affiliated with Jack Daniel Distillery” — the product’s design created a likelihood of confusion.

“Even if you didn’t already know, you’d probably not have much trouble identifying which one,” Kagan wrote about a consumer’s likelihood of identifying the brand being referenced.

Kagan allowed that the toy’s parodic use of the label could potentially help alleviate any confusion, “because consumers are not so likely to think that the maker of a mocked product is itself doing the mocking.”

image via Supreme Court documents.

As examples, Kagan pointed to Mattel’s failed lawsuit over the song “Barbie Girl,” and Louis Vuitton’s dismissed complaint over a joke in the film “The Hangover Part II” in which a character mispronounces a purported high-end piece of luggage as “Lewis Vuitton.”

However, Kagan contrasted such innocent brand references to those she would deem a “cardinal sin under the law” — those that would confuse a consumer about the source of a particular product. While a filmmaker might be able to use a Louis Vuitton suitcase to further character development, a luggage manufacturer would be prohibited from using a modified LV logo for its own purposes. That kind of brand confusion is “the core concern[] of trademark law,” said Kagan.

Kagan went a step farther and delved into the liquor cabinet once again to make her point. Including in her opinion a graphic of a bottle of Frangelico liqueur, Kagan noted that “trademarks are often expressive,” and invited readers to “[c]onsider how one liqueur brand’s trade dress (beyond identifying source) tells a story, with a bottle in the shape of a friar’s habit connoting the product’s olden monastic roots.”

image via Supreme Court documents.

Kagan wrote that the parodic nature of usage is neither irrelevant nor dispositive of infringement or dilution. Rather, a parody could constitute “fair use” under trademark law, but could also also go too far and confuse a consumer about the source of a product.

The rarities did not end with Kagan’s rather spirited opinion, either. Justices Sonia Sotomayor and Samuel Alito — the two justices who have historically been least likely to agree with each other — teamed up in a concurrence.

The unusual duo coalesced around a warning: if a court is making decisions about parodies, it should not give too much weight to surveys in which individuals report their interpretations of a contested mark.

“Survey answers may reflect a mistaken belief among some survey respondents that all parodies require permission from the owner of the parodied mark,” wrote Sotomayor for the two. Not only would many consumers misunderstand whether a manufacturer had or needed permission to use a trademark, but surveys could also be “cleverly designed” to manipulate the results so as to “silence a great many parodies.”

“After all, ‘[n]o one likes to be the butt of a joke, not even a trademark,'” Sotomayor reminded readers.

A more typical trio of justices — Neil Gorsuch, Clarence Thomas, and Amy Coney Barrett — banded together with a brief concurrence of their own. The three counseled lower courts to “handle Rogers v. Grimaldi with care,” referring to a case precedent that the majority found inapplicable to the Jack Daniel’s case.

Despite the rather whimsical tone of the proceedings and opinion in Jack Daniel’s v. VIP Products, the ruling’s potential impact on manufacturers is serious business.

“There are many businesses whose entire business model is based on creating product lines that mock famous brands,” noted intellectual property expert attorney Nicole Haff in an email to Law&Crime.

Haff suggested that such businesses “should promptly reevaluate their product lines,” and commented that the Court’s decision not to apply the Rogers test to the case was in itself significant.

“One of the most interesting things the Court did in this case is it declined to decide whether the Rogers test is ever appropriate,” Haff said. “This is notable because for more than three decades, the Rogers test has been the standard that courts throughout the country use to determine when trademark protection should apply to artistic works.”

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Elura is a columnist and trial analyst for Law & Crime. Elura is also a former civil prosecutor for NYC's Administration for Children's Services, the CEO of Lawyer Up, and the author of How To Talk To Your Lawyer and the Legalese-to-English series. Follow Elura on Twitter @elurananos