This is the classic investigation in trademark cases. But Judge Kagan, in referring the case back to the lower courts for consideration, said the chew toy’s mockery of the liquor bottle had to figure in the analysis, since it wasn’t obvious that consumers thought Jack Daniel’s was responsible for a toy he made fun of himself.
Judge Samuel A. Alito Jr. made a similar point when the case was argued in March, envisioning a meeting with a Jack Daniel’s executive.
“Someone at Jack Daniel’s goes to the CEO and says, ‘I have a great idea for a product that we are going to produce. It’s going to be a dog toy, and it’s going to have a tag that’s going to look a lot like our tag, and it’s going to have a name that’s going to look a lot like our name, Bad Spaniels, and what’s presumably going to be in this dog toy is dog urine. » said Justice Alito, suggesting consumers are unlikely to think the chew toy was made or approved by the distiller.
Justice Kagan echoed the point in his opinion. « Consumers, » he wrote, « are not so inclined to think that the creator of a derided product is himself the fool. » He added: “Self-deprecation is one thing; much less ordinary self-irony.
In a concurring opinion, Justice Sonia Sotomayor, joined by Justice Alito, warned lower courts against being too gullible in assessing polls, which are commonplace in trademark disputes, “which claim to demonstrate that consumers may be confused by an allegedly infringing product. «
Such surveys, he wrote, « may reflect a mistaken belief among some respondents that all parodies require permission from the owner of the brand being parodied. »
In a brief from the Supreme Court in the case Jack Daniel’s Properties v. VIP Products, no. 22-148, the distiller’s attorneys wrote that « everyone likes a good joke. » But the chew toy, the brief said, « confuses consumers by taking advantage of Jack Daniel’s hard-earned goodwill. »