Supreme Court takes case against Arizona dog toy maker

PHOENIX — If you want a squeaky dog toy that looks like a Jack Daniels bottle, you had better order it soon.

It might not be available months from now.

The U.S. Supreme Court on Monday agreed to a request by the distiller to review a lower court ruling which said that an Arizona company is free to produce a plastic toy which looks all the world like the company’s distinctive Old No. 7 Black Label Tennessee Whiskey.

The three-judge panel of the 9th Circuit Court of Appeals said that is permissible parody and humor.

In agreeing to take up the case, the justices did not explain their decision. And there is no guarantee that the full court will side with Jack Daniels, as it takes just the votes of four of the nine justices to grant a review.

In fact, Bennett Cooper, attorney for Scottsdale-based VIP Products which has been selling the toy, said it’s equally possible that the court took the case not to squash the toy, but to create a nationwide standard for what constitutes permissible parody.

What the justices ultimately rule could have implications beyond this specific toy.

The company’s web site features 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 the issue has attracted so much interest that attorneys for everyone from the Campbell Soup Co. to Levi Strauss & Co. have filed legal briefs.

At the heart of the legal fight is the Bad Spaniels Silly Squeaker that Lisa Blatt, attorney for Jack Daniels, insists 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.”

A trial judge sided with the whiskey company, 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.

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“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.”

Blatt, however, took a swat at the 9th Circuit for failing to apply what she said is supposed to be the legal standard: the likelihood of confusion.

“In other words, because the court of appeals though VIP Products’ notorious copying was funny, it held that the company has a First Amendment interest in confusing consumers into believing that Jack Daniels sponsors a dog toy spotlighting poop,” she wrote. And Blatt argued that the toy associates the company’s “image of sophistication” with “juvenile bathroom humor.”

What the high court ultimately rules could come down to whether a majority of the justices think the toy is funny — and whether it fits within the legal definition of what is a protected parody. Cooper said if VIP wins the case, it will set a precedent that will protect others.

“Companies that do what we do should not have to spend time litigating to what extent they have free speech rights. And he said that the facts of this case make it a good vehicle to test that legal theory.

“Our client did not sell whiskey using a parody mark,” Cooper said, something that would infringe on the distiller’s trademark and image.

“Nor did it simply slap ‘Jack Daniels’ on a dog toy and call that a parody,” he continued, noting the numerous changes to the label. “It was a transformative, fun-filled parody.”

But Cooper said it had to borrow enough elements of the Jack Daniels label “to make the joke work.”

That was the argument the 9th Circuit accepted.

Hurwitz wrote that the whole purpose is to comment humorously on the message conveyed by a Jack Daniels bottle. And that doesn’t mean it has to be on something like a formal work of art.

“The fact that VIP chose to convey this humorous message through a dog toy is irrelevant,” the judge said.

The justices did not set a date to hear arguments. But a ruling would be expected by the end of June.

In the meantime, the Bad Spaniels toy remains available on the company’s web site for $16.49, plus shipping, along with the Jose the Perro toy that looks like a Jose Cuervo bottle, the Doggie Walker squeeze toy (think Johnny Walker) and a Canine Cola toy, which is red with a white stripe design.