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Constellation and Campari back Jack Daniel’s in dog toy dispute

Constellation Brands and Campari America are among six companies to have filed legal documents in support of an appeal launched by Jack Daniel’s against the maker of a dog toy.

A group of alcohol trade associations, including DISCUS, as well as the Campbell Soup Company, the International Trademark Association and the Intellectual Property Law Association of Chicago have also pledged their support.

Jack Daniel’s, which is owned by Brown-Forman, launched an appeal against an earlier ruling last month. It argues that VIP Products, the maker of the Bad Spaniels Silly Squeakers dog toy, infringes on its trademarks and misleads consumers.

The toy takes the form of a rubber bottle designed to look similar to the classic Jack Daniel’s bottle, with black labels and white text. Instead of ‘Old No. 7’ and the words ‘Tennessee sour mash whiskey’, the dog toy instead includes the wording ‘The Old No.2 on your Tennessee carpet’.

VIP Products first sued Jack Daniel’s in 2014 after receiving cease and desist letters from the distiller.

Constellation Brands supports Jack Daniel’s plight. In its amicus brief, the company states: “[The] respondent is free to make humorous dog toys, [but] just cannot claim protection under the First Amendment when it misleads consumers into thinking that its products are affiliated with or authorized by the trademarks’ owners.”

Back in March this year, the US Court of Appeals for the Ninth Circuit ruled that the toys were “expressive” works which conveyed a humorous message, and thus the use of similar trademarks and branding to Jack Daniel’s was protected by the First Amendment.

Constellation said the the toy producer’s “entire business model is parasitic”, highlighting a number of its own products that have also been made into dog toys. These include Corona beer (the Cataroma toy); and Pacifco (the Pawschitingo and Pawsifco toys). Constellation said the unlicensed products “directly mislead consumers”.

Campari America has similar concerns. In its legal document, the company draws attention to the Hairball dog toy, designed to look like a bottle of Aperol.

“Campari has been victimized by the respondent’s crude and juvenile dog toys, which confuse consumers, dilute the value of the targeted brands, and infringe intellectual property rights.”

The group of six alcohol associations argued that the ruling in March could result in future trademark infringements.

“These holdings open the door to any number of allegedly humorous infringements of famous trademarks associated with alcohol beverages. The decision has no limiting principle that would prevent the extension of its reasoning to jokes about underage drinking, excessive consumption, or drunk driving. From children’s toys to drinking game kits to automobile accessories, anyone making an infringing product need only claim some element of juvenile humor to gain sweeping immunity from trademark infringement or dilution liability,” they said.

In its appeal, Jack Daniel’s must prove that the dog toy misleads consumers under the so-called Rogers test.

The Rogers test is used to protect the use of trademarks in works of creative expression. The trademark owner must prove that the product in question either has no artistic relevance to the underlying work, or explicitly misleads as to the source or content of the work.

VIP Products is yet to submit a response.

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