Friday, 22 January 2021 14:13
In 2014, VIP Products, LLC, (VIP Products) brought suit against Jack Daniel’s Properties, Inc. (Jack Daniel’s) seeking a declaratory judgment after receiving cease-and-desist letters. A declaratory judgment is a useful tool to seek a determination that using a mark does not infringe another’s trademark. VIP Products designs, markets, and sells “Silly Squeakers” rubber dog toys resembling bottles of various well-known beverages, such as the Jack Daniel’s whiskey bottle. The goal of VIP Products is to “reflect” “on the humanization of the dog in our lives,” and to comment on “corporations [that] take themselves very seriously.” The district court held that VIP Products was not entitled to the defenses of nominative and First Amendment fair use because the trade dress and bottle design were used to promote a somewhat non-expressive, commercial product.
On appeal, the 9th Circuit affirmed the district court's finding that VIP Products was not entitled to the defense of nominative fair use; however, found the court erred in finding trademark infringement without first requiring Jack Daniel’s to satisfy at least one of the two Rogers prongs. When an “artistic expression is at issue, the Rogers two-prong test requires the plaintiff to show the defendant’s use of the mark is either (1) “not artistically relevant to the underlying work” or (2) “explicitly misleads consumers as to the source or content of the work.” See Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). The 9th Circuit found VIP Products’ dog toy was an expressive work protected by the First Amendment because it communicated a “humorous message” through its use of word play to alter the serious phrase appearing on a Jack Daniel’s bottle—“Old No. 7 Brand”— with a silly message—“The Old No. 2.” As such, the 9th Circuit vacated the district court’s infringement holding and remanded the case for a determination of whether Jack Daniel’s can satisfy a prong of the Rogers test. See VIP Prods. LLC v. Jack Daniel’s Properties, Inc., No. 18-16012 (9th Cir. 2020).
On September 15, 2020, Jack Daniel’s filed a Petition For A Writ of Certiorari in the Supreme Court of the United States (SCOTUS) requesting a ruling that the dog toy called “Bad Spaniels” infringed its trademarks. Jack Daniel’s argued the 9th Circuit’s concern for First Amendment interests was “egregiously misguided.” On January 11, 2021, SCOTUS denied certiorari for Jack Daniel’s petition. This left in place the 9th Circuit’s ruling that VIP Products’ dog toy “Bad Spaniels” is an expressive work protected by the First Amendment.
This case is similar to the 4th Circuit’s decision in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). In that case, dog toys which “loosely resemble[d]” small Louis Vuitton handbags were held to be “successful parodies of LVM handbags and the LVM marks and trade dress[,]” and therefore did not infringe the LVM trademark. Id. at 258, 260, 263. The 4th Circuit reasoned that although “[t]he dog toy is shaped roughly like a handbag; its name ‘Chewy Vuiton’ sounds like and rhymes with LOUIS VUITTON; its monogram CV mimics LVM’s LV mark; the repetitious design clearly imitates the design on the LVM handbag; and the coloring is similar,” “no one can doubt . . . that the ‘Chewy Vuiton’ dog toy is not the ‘idealized image’ of the mark created by LVM.” Id. at 260.
Published in Trademark