WASHINGTON — The Distilled Spirits Council of the United States (DISCUS), joined by five other associations representing spirits, beer and wine producers, filed an amicus brief yesterday with the Supreme Court in support of Jack Daniel’s petition for certiorari in an important trademark case.

The case, Jack Daniel’s Properties Inc. v. VIP Products LLC, centers around VIP Products’ line of dog toys that imitate well known alcohol brands and include unsavory themes.

In 2018, a District Court judge ruled in Jack Daniel’s favor and enjoined VIP Products from selling their “Bad Spaniel’s Old No. 2 on your Tennessee Carpet” dog toy. The District Court found a likelihood that the infringing product would result in consumer confusion and that VIP’s use of juvenile bathroom humor would tarnish the Jack Daniel’s brand.

In March, however, the U.S. Court of Appeals for the 9th Circuit held that the dog toys were “expressive works” entitled to First Amendment protection and the use of a “humorous message” rendered the product “noncommercial” for trademark dilution purposes.

In urging the Supreme Court to grant the petition for certiorari and reverse the decision, the industry groups made the case in their amicus brief that the 9th Circuit’s decision “creates a legally unjustified problem of national scope for the entire alcohol beverage industry and its efforts to ensure that trademarks associated with the industry do not appear in irresponsible advertisements or consumer products.”

“The alcohol beverage industry has long worked to ensure that our products are advertised in a responsible manner,” said Courtney Armour, DISCUS Chief Legal Officer. “The 9th Circuit opinion threatens to undermine those efforts by inviting trademark infringers to pirate famous alcohol beverage brands so long as they add a humorous twist.  This case involves dog toys, but it does not take much imagination to see how this could lead to ‘humorous’ products that encourage binge drinking and blacking out, underage drinking, or drunk driving. The industry must have control over their trademarks for responsible advertising initiatives to succeed.”

The brief stated, “[t]he alcohol beverage industry has invested extensive resources in combatting irresponsible alcohol use. This work includes industry self-regulation of alcohol beverage advertising, which strictly limits the use of trademarks associated with alcohol beverage brands to ensure that all advertising using those marks promotes responsible adult consumption and does not improperly appeal to minors.”

The brief explained that the 9th Circuit’s holdings “open the door to any number of  allegedly humorous infringements of famous trademarks associated with alcohol beverages,” and includes “no limiting principle that would prevent the extension of its reasoning to jokes about underage drinking, excessive consumption, or drunk driving. If infringing uses of famous marks associated with alcohol beverages gain broad exemptions from the Lanham Act, then rampant infringement will make leading producers’ social responsibility meaningless by allowing parties outside of the industry’s self-regulatory system to use trademarks and trade dress associated with the industry to promote irresponsible drinking.”

The group underscored in the brief the beverage alcohol industry’s longstanding commitment to responsible advertising and effective self-regulation through their respective voluntary advertising and marketing codes and code review boards.

“These boards have successfully promoted compliance with the industry codes within the industry, and could even expel members from the industry associations in serious cases,” the brief stated. “But they have no ability to address the use of industry participants’ trademarks and trade dress in irresponsible ways by individuals and companies outside of the alcohol beverage industry, and non-members have no incentives to abide by association standards.  Given the limited legal authority of the review boards, the system of industry self-regulation on advertising can only succeed where industry members have effective control over the use of their trademarks and trade dress.”

They added, “[t]he dissonance between the sophisticated, adult image that a brand like Jack Daniel’s invests in and the childishness of the infringing use here not only harms Jack Daniel’s commercial interests, but tarnishes a prominent whiskey brand with the exact associations that the entire industry has worked hard to eliminate from its advertising.”

The amicus brief was filed by the Distilled Spirits Council of the United States, Beer Institute, Brewers Association, American Distilled Spirits Alliance, American Craft Spirits Association and Wine Institute.