PHOENIX (CN) - The makers of a puppy-poop-themed chew toy spoofing Jack Daniel's Tennessee Whiskey asked the Ninth Circuit Wednesday to let the company out of the doghouse.

VIP Products designed the product after the whiskey giant's "Old No. 7 Brand" mark, printing "Bad Spaniels Old No. 2 on your Tennessee Carpet" on its rubber squeaky toy.  

Evident in a Phoenix courthouse Wednesday morning, Jack Daniel's did not appreciate the pun.

"What VIP did was they associated the brand with something that was totally incompatible," attorney Matthew Nicholson told a three-judge panel. "They wrote on the bottle '43% poo by volume. 100% smelly.' They're evoking the image of a bottle of liquid feces, your honor. That is an association that is tarnishing."

Appealing a permanent injunction against the squeaky toy, VIP Products attorney Bennett Cooper said the toy could never tarnish the reputation of Jack Daniel's because the phrase Bad Spaniels does not establish similarity to Jack Daniel's sufficient for association under the Lanham Act of 1946, which is the primary federal statute that governs trademarks.

"Someone seeing Bad Spaniels doesn't think Jack Daniel's," Cooper said. "It's only when you see the entirety that you even think of Jack Daniel's."

U.S. Circuit Judge Andrew Hurwitz said it's reasonable, though, to look at the entire squeaky toy and associate it with Jack Daniel's whiskey.

"Why isn't that enough?" the Barack Obama appointee asked. 

"Because there's no evidence that overall appearance is famous," Cooper replied. 

Cooper said he'd wager most people who know Jack Daniel's still aren't familiar with Old No. 7, and the average layperson wouldn't know what the Jack Daniel's bottle actually looks like.

"There's simply no evidence of fame of anything other than the name itself, Jack Daniel's," he said.

Because only the name is famous enough a mark to be tarnished and Bad Spaniels doesn't directly evoke Jack Daniel's, Cooper said there can be no trademark tarnishment. 

VIP first sued Jack Daniel's for declaratory relief in 2014 after it sent VIP Products a cease and desist. 

Though a federal judge initially rejected VIP's First Amendment arguments, a unanimous panel on the Ninth Circuit reversed, sending the case back to the district court. When VIP prevailed on remand and again at the appeals court, Jack Daniel's brought the case to the Supreme Court in 2023. The justices didn't decide whether the toy infringed on Jack Daniel's' trademark but agreed that the Ninth Circuit went too far to shield its maker from trademark infringement claims, remanding the case to the lower court.

The trial court then ruled in favor of Jack Daniel's, enjoining VIP Products from selling the toy. VIP Products appealed. 

Representing Jack Daniel's, Nicholson said similarity absolutely establishes association in this case. 

"The association is established by the fact that they literally put a Jack Daniel's bottle on the table and designed their product based on it," he said. "They copied every aspect of the trademark."

"But that doesn't prove anything about what people think when they look at it," interrupted U.S. Circuit Judge Marsha Berzon, a Bill Clinton appointee. 

Nicholson said VIP Products conceded that its intent is to associate its toy with Jack Daniel's by copying everything on the bottle. He said the other elements of the bottle are famous enough, having been featured several times in commercials, movies and TV shows.

Cooper said case law confines judges to examining the type of product rather than the message on the product, arguing that a chew toy for dogs could never tarnish the reputation of a liquor company. Nicholson said judges must consider the message associated with the mark as well.

In 1986, a federal judge declared trading cards that spoofed the Cabbage Patch Kids by depicting children with names like "Acne Amy" and "Dead Fred" engaged in outrageous, gross-out humor violated the Cabbage Patch Kids trademark. The parties eventually settled, and the chewing gum and trading card company Topps paid $7 million and altered the Garbage Pail Kids design. 

Nicholson said it wasn't the fact that Cabbage Patch Kids were invoked on trading cards that was the issue, but rather the images on the cards in relation to Cabbage Patch Kids that proved offensive and tarnishing to the brand.

The panel, rounded out by U.S. Circuit Judge Milan Smith Jr., a George W. Bush appointee, didn't indicate when it will rule. 

Source: Courthouse News Service