Where exists the line between homage and infringement? It’s perhaps a too subtle a distinction at items, and one likely at the heart of many an intellectual property suit over the years. The winking nod to another work or product can be seen as a joke, or would be, if most corporations had a sense of humor when it comes to their IP. Alas, they do not, and the court system and our IP news is all the busier for it.
The latest case of misguided (or underappreciated) tribute involves Jack Daniels and a dog toy manufacturer named VIP Products, which makes for one of the more unlikely pairings you’ll see in a story of this type. At issue is a toy created by VIP Products called Bad Spaniels which, if the name alone wasn’t clue enough, is designed to resemble one of the whisky maker’s signature bottles. Jack Daniels did not take too kindly to either the joke or the product and sent VIP Products a cease & desist letter, which kicked off a longer legal battle, the particulars or which are recounted by Timothy Geigner at Techdirt.
The upshot of the continued wrangling is that Jack Daniels petitioned the Supreme Court to hear its case against VIP Products, which is worth pausing on: while it’s understood that IP issues of great import can involve any sort of company or product, it is objectively a bit funny to imagine the highest court in the land, not long ago mooted to possibly weigh in on entire elections, discussing a dog toy shaped like a bottle of liquor.
Alas, we have been denied any such possible joy, as SCOTUS has declined to hear the case, for reasons that are its own. That means Jack Daniels and VIP Products are left to try the matter in the lower courts, where VIP won what could be a minor victory when the Ninth Circuit instructed the lower court to apply the standards of the Rogers test, meaning that infringement can only be said to occur if the trademark use was irrelevant to the work itself or is misleading as to the origin of the work.
Given that hardly anyone would earnestly believe that Jack Daniels was now in the pet toy business with a Bad Spaniels product, it seems hard to imagine they’ll ultimately be successful in their efforts to shut down VIP Products. Which makes the whole thing a curious exercise from the perspective of Jack Daniels, although perhaps not a surprising one, given how often we see brands needlessly flex their legal muscles in IP matters. Perhaps the lesson to take away from this is that the Supreme Court can’t simply make things happen for you, particularly in cases of no merit.
