The “Bad Spaniels” dog toys, in a unanimous 9-0 decision, the United States Supreme Court found that a dog toy company had infringed on the Jack Daniels’ trademark whiskey bottle and label design.

The whiskey distiller sued the dog toy company, VIP Products, for trademark infringement over their “Bad Spaniels Silly Squeaker” toy.  The toy is shaped like the Jack Daniels “Old No. 7 Brand Tennessee Sour Mash Whiskey” bottle and label. VIP Products’ label reads “Bad Spaniels, the Old No. 2 on your Tennessee Carpet.”  Both the label design and the shape of the bottle are trademarked by Jack Daniels.

In trademark infringement cases, the issue is whether consumers are likely to be confused about the source of the product.  In many such disputes, the company infringing on the trademark is also producing a product similar to the product produced by the legitimate trademark owner. Not in this case, however, as a dog toy and a bottle of whiskey are about as far apart as can be.

Attorneys for VIP Products claimed that their product is a parody of the Jack Daniels’ bottle, and, as such, is protected under the First Amendment.  The dog toy label, which uses the same color label as Jack Daniels, also uses other scatological humor to change the alcohol content and volume of the whiskey bottle to “43% Poo By Vol.” and “100% Smelly.”

While a federal district court ruled in favor of Jack Daniels, an appeals court overruled the lower court’s decision by invoking the Rogers Test, named after the actress and dancer, Ginger Rogers, who brought a 1989 case against the producers of the movie, “Ginger and Fred,” because she felt the public would be misled into believing she was involved in the production.  In that case, the court ruled for the movie’s producers, finding that the film was an “artistic expression” and not a commercial product that would have been subject to the Lanham Act, which is the main federal trademark statute that regulars trademark infringement, trademark dilution and false advertising.

The Supreme Court didn’t accept the appeals court’s ruling that the dog toy was non-commercial, and ruled in favor of Jack Daniels, which allows the distiller to pursue its lawsuit against VIP Products in lower courts. It stopped short of overruling the Rogers Test as a valid method of determining trademark infringement, however, which was what the Jack Daniels’ attorneys were arguing for.

Writing for the Court’s unanimous opinion, Justice Elena Kagan wrote, “Today’s opinion is narrow. We do not decide whether the Rogers test is ever appropriate, or how far the ‘noncommercial use’ exclusion goes. The use of a mark does not count as noncommercial just because it parodies, or otherwise comments on, another’s products. 

“We hold only that it is not appropriate when the accused infringer has used a trademark to designate the source of its own goods – in other words, has used a trademark as a trademark. That kind of use falls within the heartland of trademark law, and does not receive special First Amendment protection,” she wrote.

If the Court had thrown out the Rogers Test, it would have given trademark holders greater ability to sue companies that parody their trademarks.  As it stands, not much has changed by this ruling, other than for this particular case.

This is the second intellectual property case to be decided by the Supreme Court in this term.  In late May, the Court ruled against the Andy Warhol, saying the artist had infringed on a photographer’s copyright when he used her photo to make silk screens of the musician, Prince.