美国上诉法院推翻杰克丹尼商标案胜诉 狗玩具「Bad Spaniels」之争再起波澜

A US appeals court has overturned a victory for Jack Daniel’s as the trademark dispute between the Tennessee whiskey producer and the makers of the 'Bad Spaniels' dog toy continues.

The long-running legal battle between Jack Daniel’s Properties Inc (JDPI) and VIP Products took a turn this Tuesday (4 August) when the 9th US Circuit Court of Appeals reversed a prior judgement in favour of Jack Daniel’s. Last year, the US District Court for the District of Arizona found that a dog toy produced by VIP Products – which resembles a bottle of Jack Daniel’s whiskey – diluted JDPI’s trademarks by tarnishment. The product in question features white text on a black label, spelling out the words ‘The Old No.2 on your Tennessee Carpet’. It also displays the text ‘43% poo by vol’ and ‘100% smelly’. Documents released by the 9th Circuit said: “Bad Spaniels is a parodic dog toy not intended for human consumption. There is no evidence in the record from which a court could reasonably infer that scatological references made on a dog toy have the same likelihood of generating disgust as identical references on a consumable product meant for humans might.” The judgement reverses a prior ban on sales of  VIP’s contentious chew toy for dogs. Bad Spaniels in the doghouse The legal battle between Brown-Forman-owned Jack Daniel’s and VIP Products began in 2014 when the whiskey producer issued a cease-and-desist letter against the dog toy manufacturer asking it to end sales of the Bad Spaniel’s Old No.2 toy. This resulted in VIP Products winning a court ruling that stated its product did not violate and trademarks. However, in 2018 the Arizona District Court ruled in favour of JDPI, on the basis that VIP Products’ use of “juvenile bathroom humour” would tarnish the Jack Daniel's whiskey brand. In March 2020, the US Court of Appeals found that the toy was an ‘expressive work’ and therefore protected by the first Amendment to the US constitution, which guarantees free speech. Six US trade groups filed an amicus brief later that year, alleging that the ruling “tarnishes” Jack Daniel’s reputation as a well-known whiskey brand using the “exact associations that the entire industry has worked hard to eliminate from its advertising”. The case had received support from the Biden administration, as well as other major brands, such as Nike and Patagonia arguing in favour of Jack Daniel’s. That judgement was overturned in June 2023 when the US Supreme Court judged in favour of JDIP, finding that VIP Products had infringed on trademarks and ‘associated the famed whiskey with dog excrement’. Having established that the parodic elements of the controversial chew toy did not constitute protected free speech, the case was returned to the lower courts to establish whether the product had done tangible damage to the trademarks held by JDPI. With the ban on sales of the Bad Spaniels No.2 toy now lifted, JDIP may request another hearing at the 9th US Circuit Court of Appeals or petition to return the case to the Supreme Court. The Spirits Business has contacted Brown-Forman for comment. Earlier this year, Jack Daniel's lost a lawsuit against Scottish comedians Greg Hemphill and Ford Kiernan, having claimed that their Jack & Victor Scotch whisky violated its trademark.