My last blog post ended with a cliffhanger: but what about Jack Daniel’s and dog toys? For those of you on the edge of your seats, thanks for waiting. There are others probably thinking, “What is this guy’s deal? First, it was shoes and socks, and now it’s whiskey and dog toys?” For those readers, I ask for a little patience. I will get to the point.

                For those unaware, the U.S. Supreme Court in June issued a decision involving trademark law. Jack Daniel’s brought trademark infringement claims against VIP Products, a company that produces a “Bad Spaniels” line of dog toys. The toys are shaped the same as the famous Tennessee whiskey bottles, and the toys also feature a label similar to the same bottles, though the toy’s label makes jokes about dog excrement on the carpet rather than describing whiskey. VIP Products claimed that use of the bottle shape and label on its toys was not infringement, claiming the same nominal fair use protection as I mentioned in my previous post. VIP Products cited the case about the Aqua song that drew the ire of Mattel. The Supreme Court held that these Bad Spaniels dog toys are not subject to the same nominative fair use protection. The Court reasoned that the toys themselves were products, rather than artistic works. With that in mind, there is a genuine concern that there could be confusion as to the source of the toys and the whiskey. This still means that Jack Daniel’s will need to prove infringement to succeed on its infringement claims. VIP Products just won’t be able to rely on nominative fair use to protect against those infringement claims.

                To bring all of the trademark fair use talk to a close, I think there are a few takeaways:

  1. Owning a trademark does not mean that you control literally every possible use of the words, symbols, etc. that make up that trademark. The law allows for exceptions. Attempts to stifle all uses other than your own will not always work.
  2. Proceed carefully if you are using the trademarks of others. These exceptions exist because the law recognizes there should be legitimate, non-infringing reasons to use the trademarks of others, but those exceptions are still pretty limited. Furthermore, a court will ultimately find whether there is or isn’t infringement, and a court might come to a different conclusion than you might.
  3. If you are struggling to determine line between what is or is not trademark infringement, talk with your attorney, preferably before you roll out the use. Having that conversation on the front end about how/whether your use will fit into fair use can cut down on heartache later.

Thanks for reading!