The Supreme Court agreed today to hear a case in an important trademark case regarding a line of dog toys with unsavory themes that imitate well known alcohol brands, including Jack Daniel’s.

The Distilled Spirits Council of the United States (DISCUS), joined by five other associations representing spirits, beer and wine producers, filed an amicus brief in September with the Supreme Court in support of Jack Daniel’s petition for certiorari in the case, Jack Daniel’s Properties Inc. v. VIP Products LLC.

“We are pleased that the Supreme Court has decided to hear this case. The alcohol beverage industry has long worked to ensure that our products are advertised in a responsible manner and trademark infringers can severely jeopardize these efforts,” said Courtney Armour, DISCUS Chief Legal Officer, in a news release. “The 9^th Circuit opinion threatens to undermine our commitment to responsibility by inviting trademark infringers to pirate famous alcohol beverage brands so long as they add a humorous twist.  This case involves dog toys, but it does not take much imagination to see how this could lead to ‘humorous’ products that encourage binge drinking and blacking out, underage drinking, or drunk driving. The industry must have control over their trademarks for responsible advertising initiatives to succeed.”

In 2018, a District Court judge ruled in Jack Daniel’s favor and enjoined VIP Products from selling their “Bad Spaniel’s Old No. 2 on your Tennessee Carpet” dog toy. The District Court found a likelihood that the infringing product would result in consumer confusion and that VIP’s use of juvenile bathroom humor would tarnish the Jack Daniel’s brand.

In 2020, however, the U.S. Court of Appeals for the 9^th Circuit held that the dog toys were “expressive works” entitled to First Amendment protection and the use of a “humorous message” rendered the product “noncommercial” for trademark dilution purposes. The Supreme Court did not elect to take up the case at that time and the case was remanded to the lower courts, where it once again wound its way back up through the system and is now ripe for the Court to review. 

In urging the Supreme Court to grant the petition for certiorari and reverse the decision, the industry groups made the case in their amicus brief that the 9^th Circuit’s decision “creates a legally unjustified problem of national scope for the entire alcohol beverage industry.”

The brief stated, “[t]he alcohol beverage industry has invested extensive resources in combatting irresponsible alcohol use. A vital part of the industry’s work is self-regulation carefully crafted to ensure that all advertising that uses trademarks associated with alcohol beverages promotes responsible adult consumption—and never improperly appeals to minors.”

The brief explained that the 9^th Circuit’s holdings “opens the door to a host of supposedly humorous infringements of famous marks associated with alcohol beverages,” and “would appear to protect infringing activity that takes the form of jokes about underage drinking, excessive consumption, or drunk driving. From children’s toys to drinking game kits to automobile accessories, those making infringing products need only employ humor to escape liability for trademark infringement or dilution.”

The group underscored in the brief the beverage alcohol industry’s longstanding commitment to responsible advertising and effective self-regulation through their respective voluntary advertising and marketing codes and code review boards. 

“These boards have successfully promoted compliance with the industry codes within the industry, on pain of being expelled from the association,” the brief stated. “But the boards have no ability to address irresponsible use of industry participants’ trademarks and trade dress by those outside the industry, whose marketing is not subject to industry rules.  … If non-industry participants can infringe members’ marks in a manner that promotes irresponsible drinking, that loss of control directly undermines the industry’s self-regulation. In short, policing such misconduct requires rigorous trademark enforcement and robust legal protection of members’ marks.”

The amicus brief was filed by the Distilled Spirits Council of the United States, Beer Institute, Brewers Association, American Distilled Spirits Alliance, American Craft Spirits Association and Wine Institute.