(WASHINGTON) — It’s a brand battle in the Supreme Court this week as whiskey maker Jack Daniel’s Properties, Inc. takes on a dog toy manufacturer in a case over free speech and federal trademark law.

The case, first filed by Jack Daniel’s Properties, Inc., against VIP Products LLC in Arizona several years ago and slated for a Wednesday hearing before the high court, claims trademark infringement over an injection-molded vinyl chew toy the whiskey manufacturer says infringes on its trademark.

VIP’s “Silly Squeakers” dog toys are made to resemble real-life products, mostly involving sodas, beers, wines and liquors. The toy bottle in question reads “BAD SPANIELS” instead of “JACK DANIEL’S,” “The Old No. 2” instead of “Old No. 7 Brand,” and “On your Tennessee CARPET” instead of “Tennessee sour mash WHISKEY.”

The district court found VIP’s use of the Jack Daniel’s trademark was likely to confuse consumers. However, on appeal, the Ninth Circuit Court of Appeals ruled in favor of VIP in 2020. The Supreme Court is now tasked with determining when “humorous use” of a brand’s logo and identity in a commercial product by a third party violates federal trademark law or deserves protection under the First Amendment.

Jack Daniel’s brief claims the products mislead customers for profit.

“VIP sells products mimicking Jack Daniel’s iconic marks and trade dress that mislead consumers, profit from Jack Daniel’s hard-earned goodwill, and associate Jack Daniel’s whiskey with excrement,” reads the brief.

The dog toy company invokes its First Amendment rights in its brief to the Supreme Court.

“Freedom of speech begins with freedom to mock,” reads the first sentence of VIP’s brief.

The brief of respondent argues the product is not a trademark infringement because “Bad Spaniels” is not an actual product — the dog toy, which has artwork on it, is the product.

“This case is not a dispute between two trademarks on commercial products,” reads the brief. “VIP uses a pretend trademark and pretend trade on a pretend label on a pretend bottle full of pretend contents.”

Rogers v. Grimaldi

The Ninth Circuit decision, upholding VIP’s ability to sell the whiskey-themed dog toy, relied on a longstanding ruling from a different federal appeals court in the 1989 case Rogers v. Grimaldi.

When actress Ginger Rogers sued Alberto Grimaldi and MGM films over Ginger and Fred — a film about two cabaret performers whose routine resembled that of Rogers and Fred Astaire — the Second Circuit Court of Appeals developed a test, known as the Rogers test, for balancing First Amendment free speech rights with trademark protections under the Lanham Act. The court ruled in favor of Grimaldi, saying the film was not likely to deceive or cause confusion in replicating a trademarked routine.

In the Jack Daniel’s case, the Ninth Circuit agreed that the Jack Daniel’s bottle design is protected under trademark law but concluded the humorous approach of VIP was protected by the First Amendment.

“Although VIP used Jack Daniel’s trade dress and bottle design to sell Bad Spaniels, they were also used to convey a humorous message, which was protected by the First Amendment,” reads the opinion.

Other stakeholders

A slate of major commercial brands have weighed in on the Supreme Court case through amicus briefs, or friend-of-the-court filings that allow other stakeholders to inform the justices of broader implications of a case.

Nike, Inc., Campbell Soup Company, Levi Strauss & Co. and American Apparel & Footwear Association all filed briefs in favor of Jack Daniel’s argument. If the Ninth Circuit ruling stands, it “opens the door to a new global counterfeit threat: an influx of infringing products meriting First Amendment protection because their creators clear a ground-level hurdle of affixing minimal ‘humorous’ expression onto them,” according to American Apparel’s amicus brief.

In the 1986 case Grey v. Campbell Soup Company, Campbell’s, which owned the trademark GODIVA, won an injunction against a pet treat maker branded as Dogiva, with packaging that infringed on the trademark for Godiva’s chocolates. Campbell’s brief claims it would have lost the case under the standard set forth by the Ninth Circuit in 2020.

“If the case were litigated today, Grey would undoubtedly argue that DOGIVA was intended to be a humorous commentary on the GODIVA® brand and thus was an expressive work, and Ninth Circuit precedent would require the district court to impose a heightened burden on Campbell Soup to show that the Rogers test was satisfied,” reads the Campbell brief.

The Distilled Spirits Council of the United States also filed an amicus brief in favor of Jack Daniel’s. A release sent to ABC News earlier this week says this case is about ensuring responsible advertising.

“This case is no laughing matter,” Courtney Armour, chief legal officer for Distilled Spirits Council, said. “While the case involves dog toys, even allegedly ‘humorous’ knock-offs can confuse consumers as to what messaging and products well-known alcohol beverage brands endorse.”

The Biden administration also supports a ruling in favor of Jack Daniel’s, according to a brief from the U.S. Solicitor General’s office.

Among those weighing in on behalf of VIP are at least 30 trademark law professors, whose brief argues the company’s “speech” is “noncommercial.”

The Motion Picture Association — comprised of some of the largest film distributors in the country — filed a brief that backed neither party, instead offering context for why filmmakers are invested in the case.

“A work might [refer to trademarks] to create a realistic or fanciful setting, to cast the mark in a creative new light, or to comment on it directly,” the filing says.

The court is expected to deliver a decision in the case by the end of June.

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