A legal dispute between a dog toy manufacturer and a major whiskey producer reached the Ninth Circuit Court of Appeals on Wednesday, as attorneys debated whether a parody chew toy infringes on trademark protections.
VIP Products, the company behind a rubber squeaky toy called “Bad Spaniels,” is appealing a permanent injunction that prevents them from selling their product. The toy’s design closely resembles Jack Daniel’s whiskey bottles, featuring the text “Old No. 2 on your Tennessee Carpet” in place of the whiskey brand’s “Old No. 7 Brand” marking. The toy also includes phrases such as “43% poo by volume” and “100% smelly.”
During oral arguments in Phoenix, attorney Matthew Nicholson, representing Jack Daniel’s, argued that the toy creates an inappropriate association with the whiskey brand. He emphasized that the product connects their trademark with imagery of bodily waste, which he characterized as tarnishing to the brand’s reputation.
Bennett Cooper, representing VIP Products, countered that the phrase “Bad Spaniels” alone does not create sufficient similarity to Jack Daniel’s under the Lanham Act of 1946, the federal statute governing trademark law. Cooper argued that consumers would not immediately think of Jack Daniel’s when seeing the name “Bad Spaniels” without viewing the entire product design.
The case has a complex procedural history dating back to 2014, when VIP Products initially filed for declaratory relief after receiving a cease and desist letter from Jack Daniel’s. A federal judge initially rejected VIP’s First Amendment defense, but the Ninth Circuit reversed that decision. After VIP won on remand and at the appeals level, Jack Daniel’s successfully brought the matter to the Supreme Court in 2023.
The Supreme Court did not determine whether the toy infringed on the trademark but found that the Ninth Circuit had gone too far in protecting the toy maker from infringement claims. The case was remanded to lower courts, where a trial judge ultimately ruled in favor of Jack Daniel’s and issued the injunction that VIP Products is now appealing.
During Wednesday’s hearing, Circuit Judge Andrew Hurwitz questioned whether viewing the entire toy design would reasonably lead consumers to associate it with Jack Daniel’s whiskey. Cooper responded that there was insufficient evidence showing that the overall bottle appearance, rather than just the name, had achieved the level of fame necessary for trademark protection.
Nicholson argued that VIP Products had deliberately copied every aspect of the Jack Daniel’s trademark, pointing to the company’s admitted intent to create an association with the whiskey brand. He noted that various elements of the Jack Daniel’s bottle design have appeared in commercials, movies, and television shows, establishing their fame beyond just the brand name.
The discussion also touched on legal precedent from a 1986 case involving Garbage Pail Kids trading cards that parodied Cabbage Patch Kids dolls. That case, which resulted in a $7 million settlement, established that offensive associations with a trademark could constitute tarnishment even when presented in a different product format.
Cooper maintained that legal precedent requires examining the type of product rather than the message it conveys, arguing that a dog chew toy could not tarnish a liquor company’s reputation. Nicholson disagreed, stating that courts must consider both the product type and the message associated with the trademark.
The three-judge panel, which included Circuit Judges Marsha Berzon and Milan Smith Jr. alongside Judge Hurwitz, did not indicate when they would issue their ruling on the appeal.
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