Beer, wine, and liquor trade groups come out of the woodwork to file amicus petition to stomp expansive First Amendment protections and keep Bad Spaniel‘s from making their Jack Daniel’s parody dog toys. Bonus: we’ve got the briefs for you.

You’ll remember the fun of the 9th Circuit opinion in the VIP Products v. Jack Daniel’s case from back in April where the 9th Circuit reversed a finding in favor of the distiller finding that a dog toy called “Bad Spaniels” and bearing a striking resemblance to Tennessee’s favorite whisky bottle had First Amendment protection as an expressive work regardless of its commercial aspirations:

The two products at issue

You can read our piece on this liquor trademark case here. The best part of the opinion was this snippet:

“Like the greeting cards in Gordon, the Bad Spaniels dog toy, although surely not the equivalent of the Mona Lisa, is an expressive work. See Empire Distribution, 875 F.3d at 1196 (“We decide this legal question de novo.”). The toy communicates a “humorous message,” see Gordon, 909 at 268–69, using word play to alter the serious phrase that appears on a Jack Daniel’s bottle—“Old No. 7 Brand”—with a silly message—“The Old No. 2.” The effect is “a simple” message conveyed by “juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner.” L.L. Bean, Inc., 811 F.2d at 34 (affording First Amendment protection to a message “that business and product images need not always be taken too seriously”). Unlike the book in Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997), which made “no effort to create a transformative work with ‘new expression, meaning, or message,’” Bad Spaniels comments humorously on precisely those elements that Jack Daniels seeks to enforce here. Id. at 1401 (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578, 580 (1994)). The fact that VIP chose to convey this humorous message through a dog toy is irrelevant. See Hurley v. Irish-Am. Gay, Lesbian & Bisexual Grp. of Bos., 515 U.S. 557, 569 (1995) (“[T]he Constitution looks beyond written or spoken words as mediums of expression.”).”

Jack Daniel’s filed a petition for cert. requesting that SCOTUS take up the alcohol trademark issues claiming the 9th Circuit’s ruling is part of a broad differentiation in standards between the Circuits (I wouldn’t exactly call it a split) requiring SCOTUS’s deft hand in resolving the nuances as to what situations would amount to parody allowing for First Amendment protections and arguing that, if any, this dog toy wasn’t one of them. 

Looking to protect their interests and keep themselves from the same form of dog toy fame, Campari, Constellation Brands, and even Campbell’s soup filed amicus petitions arguing the Court should take up the case and reverse. Oddly every single alcoholic beverage manufacturing trade group that I can think of got together and put their imprimatur behind a similar amicus brief. 

The American Craft Spirits Association, the American Distilled Spirits Association, the Distilled Spirits Council of the US, the Beer Institute, the Brewers Association, and the Wine Institute, all signed onto the same brief that argues their advertising codes are thwarted by dog toys that get to make fun of brands because that kind of use might promote irresponsible consumption. Craft and non-craft alike.

The backing from entities representing large producers that want to protect their brands is an obvious connection, but what is a tad odd is that the craft associations signed on when their members make thousands of products that riff, play, parody, and outright steal from famous movies and brands in homage to their favorite things. Just in craft beer alone this past month the number of ecto-cooler themed beers is staggering (and that’s a double-riff for Ghostbusters and Hi-C).

Brewers, vintners and even distillers have a long history of naming and labeling in a fashion that plays on the honest trademarks and copyrights of others. All in good fun. Any decent review of COLA approvals in any given month will have hundreds of parody-esque applications all referencing some trademarked or copyrighted pop-culture phenomenon.

So it was odd to see nearly every craft alcohol manufacturing trade group file an amicus brief requesting that the Supreme Court take up the case.

Given the expansive First Amendment implications and the protections of parody involved, hopefully this either gets denied or taken up and affirmed as no one is mistaking Bad Spaniel’s as a Jack Daniel’s endorsed toy. True, a Jack Daniel’s lover might be buying it, but are they buying it in exclusion to buying the licensed Jack Daniel’s dog toy? Does such a dog toy exist? Seriously, inquiring enthusiasts wonder:

I will buy your Jack Daniel’s dog toy…

In any event, the response from VIP Products is due November 18th and any action by the Supreme Court has First Amendment implications, so it will be an enjoyable time.

For those interested in the briefs:

Here is Jack Daniel’s Petition

Along with these Amici briefs:

International TM Association

Campbell’s Soup

The Alcohol Industry Trade Groups


Constellation Brands

Chicago IP Law Association

Ashley Brandt

Hi there! I’m happy you’re here. My name is Ashley Brandt and I’m an attorney in Chicago representing clients in the Food and Beverage, Advertising, Media, and Real Estate industries. A while back I kept getting calls and questions from industry professionals and attorneys looking for advice and information on a fun and unique area of law that I’m lucky enough to practice in. These calls represented a serious lack of, and need for, some answers, news, and information on the legal aspects of marketing and media. I've got this deep seeded belief that information should be readily available and that the greatest benefit from the information age is open access to knowledge... so ... this blog seemed like the best way to accomplish that. I enjoy being an attorney and it’s given me some amazing opportunities, wonderful experiences, and an appreciation and love for this work. I live in Chicago and work at an exceptional law firm, Goldstein & McClintock, with some truly brilliant people. Feel free to contact me at any time with any issues, comments, concerns… frankly, after reading this far, I hope you take the time to at least let me know what you think about the blog and how I can make it a better resource.

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