WASHINGTON — In a lively and light-hearted speech On Wednesday, the Supreme Court considered the fate of the Bad Spaniels Silly Squeaker, a dog chew toy that looks a lot like a bottle of Jack Daniel’s with the addition of some potty humor.
Trademark cases are generally about whether the public is likely to be confused about the source of a product. In the case of Bad Spaniels, a unanimous three-judge panel of the Ninth Circuit Court of Appeals, in San Francisco, said the First Amendment requires a more demanding test when the challenged product expresses an idea or point of view.
“The Bad Spaniels dog toy, while certainly not the equivalent of the Mona Lisa, is an expressive work” that uses irreverent humor and puns to poke fun at Jack Daniel’s, Judge Andrew D. Hurwitz wrote for the panel.
The words “Old No. 7 Brand Tennessee Sour Mash Whiskey” on the bottle are replaced on the chew toy with “the Old No. 2, on your Tennessee carpet.” Where Jack Daniel’s says its product is 40 percent alcohol, the Bad Spaniels toy is said to be “43 percent poop.”
A label attached to the toy says it is “not affiliated with the Jack Daniel Distillery”.
The judges on Wednesday were divided on several dimensions, giving differing opinions on whether the toy was a purely commercial product or an expressive one, whether consumers were rightly confused about its provenance, whether the toy amounted to a parody of the liquor brand and about the role the First Amendment should play in legal analysis.
Judge Sonia Sotomayor asked whether a political party could sue over a T-shirt made by an activist that mocked a trademarked animal logo, such as a donkey or an elephant.
Lisa S. Blatt, a lawyer for Jack Daniel’s, said the answer would depend on whether a significant number of people were confused about the provenance of the shirt. “You do have to get permission if it’s confusing,” she said.
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Justice Sotomayor disagreed. “They don’t need permission to make a political joke,” she said. “They don’t need permission to make a parody.”
Judge Samuel A. Alito Jr. said no sane person would think that the Bad Spaniels chew toys were approved by the liquor company. He imagined a pitch meeting with a top executive.
“Someone from Jack Daniel’s comes up to the CEO and says, ‘I have a great idea for a product that we’re going to produce. It’s going to be a dog toy, and it’s going to be labeled a lot like our label, and it’s going to be called a lot like our name, Bad Spaniels, and what’s supposed to be in this dog toy is dog urine,” Judge Alito said.
The executive, Justice Alito added, probably wouldn’t say, “That’s a great idea. We are going to produce that thing.”
Ms. Blatt said the test was whether ordinary consumers, not federal judges, would be confused about a product’s source.
“You went to law school,” she told Justice Alito, who graduated from Yale. “You are very smart. You are analytical.”
Judge Alito responded that he “went to a law school where I didn’t learn law.” On the other hand, he said, “I had a dog. I know a thing or two about dogs.”
Bennett E. Cooper, an attorney for the toy manufacturer VIP Products, said consumer surveys cannot be the basis for censoring constitutionally protected speech. “The First Amendment is not a game show,” he said, “where the result is, ‘Survey says I’m confused, stop talking.'”
Justice Elena Kagan said other cases could raise tough questions. But this one, she said, was easy.
“This is not a political T-shirt,” she said. “It’s not a movie. It’s not an artistic photo. It’s none of those things. It is a standard commercial product.”
Mrs. Blatt indicated that she did not want to win on that basis alone. The key question, she said, was not whether the toy was commercial, but whether the consumer knew who made it. A ruling limited to the first rationale, she said, would leave important questions unresolved.
“You immediately get into the situation,” she said, “where you say, ‘I’ll allow a confusing short film, but not a confusing commercial; I allow confusing painting, but I don’t allow confusing wallpaper; I allow a confusing video game, but I don’t allow a confusing board game; I allow a confusing carpet, but not a confusing rug.”
When questioning Mr. Cooper, the chew toy manufacturer’s lawyer, Judge Kagan said she didn’t get the joke.
“Maybe I don’t have a sense of humor,” she said. “But what is the parody?”
Mr Bennett said the toys mocked a brand that took itself too seriously.
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The judiciary found this to be too flexible and forgiving a benchmark. “You make fun of a lot of markers: Doggie Walker, Dos Perros, Smella Arpaw, Canine Cola, Mountain Drool,” she said. “Do all these companies take themselves too seriously?”
Mr. Cooper said yes.
At least one other court has dismissed a dog toy infringement claim, but without bringing in the First Amendment.
In 2007, the Court of Appeals for the Fourth Circuit, in Richmond, Va., ruled in favor of a company called Haute Diggity Dogsaying it had the right to sell Chewy Vuiton dog toys that looked like miniature Louis Vuitton handbags.
Judge Paul V. Niemeyerwriting for a unanimous three-judge panel, said the toy “immediately conveys a gag and funny parody.”
“The furry little ‘Chewy Vuiton’ imitation, like something for a dog to chew, pokes fun at the elegance and expensiveness of a Louis Vuitton handbag, which should not be chewed by a dog,” he wrote, adding adding: “The dog toy irreverently presents haute couture as an object for the casual destruction of dogs. The satire is undeniable.”
Ms. Blatt said that case and the one before the judges, Jack Daniel’s Properties v. VIP Products, No. 22-148, were very different.
“Louis Vuitton makes dog products, but they cost $1,200,” she said. “They are complete luxury products.”
In contrast, she said, “Jack Daniel’s makes dog products and sells licensed merchandise, like hats and bar stools and what have you, in the same markets where Bad Spaniels sold its dog toys.”