The way a federal appellate judge sees it, a squeaky dog toy in the shape of a whiskey bottle, manufactured by an Arizona firm, is “surely not the equivalent of the Mona Lisa.”
But what it is, according to Judge Andrew Hurwitz, is an “expressive work.” And that makes its use protected by the First Amendment against claims by the company that makes Jack Daniels that the toy infringes on its copyright.
The fight that got the attention of the 9th Circuit Court of Appeals deals with a product called “Bad Spaniels Silly Squeaker,” a rubber dog toy which resembles the body of Jack Daniels Old No. 7 Black Label Tennessee Whiskey.
There are some “dog-related alterations.”
For example, the “Old No. 7” on the label is replaced by “Old No. 2.” And instead of alcohol-content descriptions, the toy was labeled “43% Poo by Vol.” and “100% Smelly.”
The company that owns Jack Daniels demanded that VIP Productions LLC, based in Scottsdale, stop selling the product. VIP responded by filing suit and asking for a declaration that it was doing nothing wrong and even asking the court to cancel the Jack Daniels trademark.
A trial judge sided with the whiskey company, deciding that the toy infringed on the Jack Daniels trademark and ordering VIP to stop selling the product.
But in a ruling Tuesday, the federal appeals court dissolved that injunction.
Hurwitz, writing for the three-judge panel, said VIP sell various kinds of Silly Squeakers rubber dog toys that look like other items but with a twist.
For example, he said, there’s one labeled “Mountain Drool” which resembles a Mountain Dew bottle. More than a million Silly Squeakers were sold between 2007 and 2017.
On one hand, the appellate judges said that the “trade dress” and bottle design of Jack Daniels are distinctive. That, Hurwitz wrote, meant the company can keep its trademark.
But the judge said that didn’t end the discussion. He said there also is an issue of “artistic expression.”
“The Bad Spaniels dog toy, although surely not the equivalent of the Mona Lisa, is an expressive work,” wrote Hurwitz, a President Obama appointee and a former Arizona Supreme Court Justice.
“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,” the judge, a Democrat, said. “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.”
Hurwitz said 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.
Attorney David Bray who represented VIP said the appellate court concluded that nothing in the toy either diluted or tarnished the Jack Daniels trademark.
Peter Harvey, attorney for Jack Daniels, said his client is “reviewing the decision and has no comment at this time.”