Ruff day in court for Arizona doggy toy maker

Those squeaky dog toys made by an Arizona firm that mimic Jack Daniels bottles may be a thing of the past.

VIP Products infringed on the liquor company’s trademark by producing its “Bad Spaniel,” toy that even the company admitted was modeled after the Jack Daniels bottle, the U.S. Supreme Court said Tuesday in a unanimous ruling. The justices rejected claims by the attorney for the Scottsdale firm that the poop-themed toy automatically made it permissible parody.

The ruling could have implications far beyond that specific toy which, as of Thursday, was still available for sale on Amazon and several other websites.

VIP has offered similar products, including Heine Sniff’n in something that looks like a Heineken bottle, Mountain Drool that mimics a Mountain Dew bottle, and Cataroma that bears more than a passing resemblance to Corona. And there are other parody items like Jose the Perro toy that looks like a Jose Cuervo bottle, the Doggie Walker squeeze toy (think Johnny Walker) and a Canine Cola with a design similar to a Coca Cola can.

More broadly, the decision by the high court about what is — and is not — legally permissible as “parody” could pave the way for new lawsuits by other companies who are upset about products that look like their own. In fact, the issue attracted so much interest that attorneys for everyone from the Campbell Soup Co. to Levi Strauss & Co. filed legal briefs.

At the heart of the legal fight is the Bad Spaniels Silly Squeaker that Jack Daniels insisted cannot be sold because the company “has a strong interest in protecting its trademarks and trade dress from association with juvenile bathroom humor.”

But there are differences between the whiskey bottle and the toy.

For example, the “Old No. 7 Tennessee Sour Mash Whiskey” on the label is replaced by “The Old No. 2 on your Tennessee Carpet.” It’s also labeled “Bad Spaniels’’ instead of “Jack Daniels.”

And instead of alcohol-content descriptions, the toy was labeled “43% Poo by Vol.” and “100% Smelly.”

The whiskey company was not amused and sued.

A trial judge sided with the distiller, citing evidence that 29% of consumers believed Jack Daniels actually sponsored the toy, declaring that it infringed on the the company’s trademark. But the appellate judges saw the issue through a different legal lens.

“The toy communicates a humorous message, using word play to alter the serious phrase that appears on a Jack Daniels bottle — ‘Old No. 7 Brand’ — with a silly message — ‘The Old. No. 2,’” wrote Judge Andrew Hurwitz for the court. “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.”

And Hurwitz said it “comments humorously” on Jack Daniels.

Justice Elena Kagan, writing for the court Thursday, said the flaw with that is that VIP used a trademark — the design of the Jack Daniels bottle — to claim its own ownership of the design of the toy.

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“That kind of use falls within the heartland of trademark law, and does not receive special First Amendment protection,” she said. “The use of a mark does not count as noncommercial just because it parodies, or otherwise comments on, another’s products.”

Kagan said all that goes to the reason that companies trademark things like their “trade dress,” the overall appearance of a product. That can make it instantly identifiable to consumers.

“A source-identifying mark enables customers to select the goods and services that they wish to purchase, as well as those they want to avoid,” the justice explained. “The mark quickly and easily assures a potential customer that this item — the item with the mark — is made by the same producer as other similarly marked items the he or she liked (or disliked) in the past.”

And then there’s the benefits of trademarks to the company that made the original item.

“They ensure that the producer itself — and not some ‘imitating competitor’ — will reap the financial rewards associated with the product’s good reputation,” she said.

Still, the justices left intact earlier decisions that provide a bit of wiggle room in the cases of true parody and some “expressive function.”

Consider, Kagan said, the song “Barbie Girl” which contains lyrics like “Life in plastics, it’s fantastic” and “I’m a blond bimbo girl in a fantasy world.” In tossing out a lawsuit by Mattel, she said, there was no confusion.

“A consumer would no more think that the song was produced by Mattel that would, upon hearing Janis Joplin croon ‘Oh, Lord, would you buy me a Mercedes Benz?’ suspect that she and the carmaker had entered into a joint venture,” Kagan said.

Similarly, she said, it was correct for a court to dismiss a lawsuit by Louis Vuitton because a character in the film “The Hangover: Part II” described his luggage as Louis Vuitton, though she noted the actor even mispronounced the name.

But the legal line is crossed, the justice said, when someone’s product may be “trading on the good will of the trademark owner to market its own goods.”

In a footnote, Kagan said that not every claim of infringement on trade dress will require full-scale litigation — or a ruling against the other part.

“Some of those uses will not present any plausible likelihood of confusion — because of dissimilarity in the marks or various contextural considerations,” she wrote. “And if, in a given case, a plaintiff fails to plausible allege a likelihood of confusion, the district could should dismiss the complaint.”