“One can only hope that Jack Daniel’s will obtain a rehearing en banc or certiorari so that this dog of a decision can be overturned. Until then, brand owners, especially those subject to jurisdiction in the Ninth Circuit, should be vigilant about protecting their brands, and should take care to avoid laying the foundation for a declaratory judgment action in the Ninth Circuit…”
The U.S. Court of Appeals for the Ninth Circuit held that a squeaking dog toy resembling a bottle of Jack Daniel’s whiskey is an expressive work entitled to First Amendment protection. VIP Prods. LLC v. Jack Daniel’s Properties, Inc., No. 18-16012 (9th Cir. Mar. 31, 2020). The court reversed a bench trial verdict that the toy infringed and diluted the JACK DANIEL’S trade dress and remanded for further reconsideration by the district court. Before the district court may find that the toy infringed Jack Daniel’s famous trade dress, the Ninth Circuit held that the district court must first apply the Second Circuit’s Rogers test, which will require it to consider whether VIP’s use of the trade dress was artistically relevant to the toy’s expressive character, and whether VIP’s use of the trade dress explicitly misleads consumers as to the source of the toy. The Rogerstest, though, has only been applied to expressive works such as books, songs, video games and movies; it has never been applied to consumer products like handbags and perfume, even if those products were intended as parodies. The Ninth Circuit’s decision expands the scope of First Amendment protection far beyond traditionally expressive works, and risks exposing a wide variety of brand owners to infringements based on alleged parody.
A Dog Walks Into a Bar . . .
VIP Products (“VIP”) sells the “Bad Spaniels Silly Squeaker” dog toy, which resembles a bottle of Jack Daniel’s Old No. 7 Black Label Tennessee Whiskey, but has light-hearted, dog-related alterations (as shown above right).
After Jack Daniel’s Properties, Inc. (“Jack Daniel’s”) demanded that VIP cease selling the toy, VIP sought a declaration that the toy did not infringe Jack Daniel’s trademark rights, or, in the alternative, that Jack Daniel’s trade dress and bottle design were not entitled to trademark protection. Jack Daniel’s counterclaimed, asserting trademark infringement and dilution.
On cross motions for summary judgment, the district court held that VIP was not entitled to the defense First Amendment fair use because the toy “is not an expressive work.” 2016 WL 5408313, at *5 (D. Ariz. Sept. 27, 2016). The district court held that the test articulated in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) for balancing the interests between trademark law and First Amendment, did not apply here because the Rogers test applies to artistic or expressive works such as movies, plays, books, and songs and “requires courts to construe trademark law only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” VIP, 2016 WL 5408313, at *5. The district court explained that “the First Amendment affords no protection to VIP because it is trademark law that regulates misleading commercial speech where another’s trademark is used for source identification in a way likely to cause consumer confusion.” Id. In reaching its decision, the district court relied on Tommy Hilfiger Licensing Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410 (S.D.N.Y. 2002). In that case, the U.S. District Court for the Southern District of New York held that First Amendment protection did not apply to “Timmy Holedigger,” a dog perfume that allegedly parodied the Tommy Hilfiger trademark, because the mark was being used “at least in part to promote a somewhat non-expressive, commercial product” and “trademark law permissibly regulates misleading commercial speech.” Id. at 415, 16.
The District Court also rejected VIP’s arguments that the JACK DANIEL’s trade dress was not distinctive and that it was aesthetically functional, and that VIP was entitled to relying on the nominative fair use defense.
Following a four-day bench trial, the district court found in favor of Jack Daniel’s and issued a permanent injunction enjoining VIP from manufacturing and selling the Bad Spaniels toy. 291 F. Supp. 3d 891 (D. Ariz. 2018).
The Ninth Circuit Tells the District Court to Roll Over
On appeal, the Ninth Circuit held that the district court erred in finding that the Bad Spaniels toy was not an expressive work. The court explained that “[a] work need not be the expressive equal of Anna Karenina or Citizen Kane” to be considered expressive; nor is a work “rendered non-expressive simply because it sold commercially.” VIP Prods., No. 18-16012, at 10 (citations and quotation marks omitted). The court observed that it recently had “little difficulty” concluding that greeting cards containing trademarked phrases were expressive works entitled to First Amendment protection, even though they did not show great “creative artistry.” Id. (quoting Gordon v. Drape Creative, Inc., 909 F.3d 257 (9th Cir. 2018)). Although, the court acknowledged, the Bad Spaniels toy “surely [is] not the equivalent of the Mona Lisa,” it is nevertheless an expressive work. Id.
Accordingly, the court held that, as a threshold matter, the Rogers test needed to be applied. Under that test, a trademark infringement plaintiff must show that the defendant’s use of the mark either (1) is “not artistically relevant to the underlying work” or (2) “explicitly misleads consumers as to the source or content of the work.” Id. at 9 (quoting Gordon, 909 F.3d at 265). The Ninth Circuit vacated the district court’s finding of infringement and remanded for a determination, in the first instance, of whether Jack Daniel’s can satisfy either element of the Rogers test.
The appeals court also reversed the finding of dilution by tarnishment. Because the court found that the Bad Spaniels dog toy is an expressive work (based on the holding that it was conveying a “humorous message,” VIP Prods., No. 18-16012, at 12), the court held that the message is protected by the First Amendment. The court therefore held that VIP was entitled to summary judgment on the federal and state trademark dilution claims.
The Ninth Circuit Strays from Rogers v. Grimaldi
Although the Ninth Circuit has, over the years, adopted and expanded the Rogers test, its application, until now, has been limited to plainly expressive works. The most recent application to consumer goods is unprecedented and places brand owners at significant risk of infringements and dilutions masquerading as expressive works.
Rogers v. Grimaldi involved a Fellini film entitled “Ginger and Fred,” which told the story of two fictional Italian cabaret performers who imitated Ginger Rogers and Fred Astaire, one of the most famous duos in show business history. Ginger Rogers sued for false designation of origin (among other claims), and argued that the movie title created the false impression that the film was about her or that she sponsored, endorsed, or was otherwise involved in the film. In analyzing the claim, the Second Circuit acknowledged that creative works of expression such as movies, plays, books and songs are entitled to First Amendment protection, but they also are sold commercially, which increases the risk of consumer deception, and thus warrants some government regulation. To strike a balance, the Court construed the Lanham Act to “insulate from restriction titles with at least minimal artistic relevance . . . [while] leav[ing] vulnerable to claims of deception titles that are explicitly misleading as to source or content, or that have no artistic relevance at all.” Rogers, 875 F.2d at 1000.
The Ninth Circuit first adopted the Rogers test in Mattel, Inc. v. MCA Records, Inc. 296 F.3d 894 (9th Cir. 2002), which involved the song “Barbie Girl.” Mattel, the manufacturer of Barbie dolls, sued the producers of the song for infringement, and the Ninth Circuit affirmed dismissal of the claim because the use of the Barbie mark in the song’s title was artistically relevant to the song (which was about Barbie and the values the band claimed she represented), and the song did not suggest that Mattel was involved in its production.
In 2008, the Ninth Circuit extended the Rogers test beyond a work’s title in E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008). The case involved the video game Grand Theft Auto: San Andreas, which took place in a fictionalized version of Los Angeles. One of the game’s neighborhoods parodied the seedy underbelly of East Los Angeles by mimicking its businesses and architecture, and included a virtual strip club called the “Pig Pen.” The plaintiff operated the Play Pen Gentleman’s Club in Los Angeles and sued for infringement of its trademark and trade dress. The Ninth Circuit applied the Rogers test and held that, “[a]though this test traditionally applies to uses of a trademark in the title of an artistic work, there is no principled reason why it out not also apply to the use of a trademark in the body of the work.” Id. at 1099.
In 2018, the Ninth Circuit decided Gordon, which involved greeting cards that included the viral sensation trademarked catchphrase “Honey Badger Don’t Care” (and other versions such as “Honey Badger Don’t Give a Sh**”). Based on prior precedent recognizing that greeting cards inherently communicate messages, the Ninth Circuit had “little difficulty” concluding that greeting cards are expressive works protected under the First Amendment, and held that the Rogers test applied. 909 F.3d at 268 (citing Hilton v. Hallmark Cards, 599 F.3d 894, 904 (9th Cir. 2010).
All of Ninth Circuit’s prior cases in which it applied the Rogers test involved plainly expressive works such as movies, songs, photographs, television shows, video games, and greeting cards. Although the Ninth Circuit has not previously addressed consumer goods in this context, other courts that have addressed cases involving consumer goods (like the Tommy Holedigger perfume case noted above), have not applied the Rogers test. For example, in Louis Vuitton Malletier S.A. v. Haute Diggity Dog LLC, 507 F.3d 252 (4th Cir. 2007), in deciding whether the defendant’s Chewy Vuitton dog toy infringed Louis Vuitton’s famous trademark, the Fourth Circuit first considered whether the toys were a parody. Although the Fourth Circuit found that the defendant successfully parodied Louis Vuitton’s brand, that did not end the inquiry into whether the Chewy Vuitton products created a likelihood of confusion. Rather, “[t]he finding of a successful parody only influences the way in which the [likelihood of confusion] factors are applied.” Id. at 261.
The Ninth Circuit cited Haute Diggity Dog in support of its decision, and noted that it was decided on likelihood of confusion rather than the First Amendment grounds because the Fourth Circuit did not adopt the Rogers test until eight years later in Radiance Found., Inc. v. NAACP, 786 F.3d 316 (4th Cir. 2015). But the Fourth Circuit did not hold in Radiance Found. either that consumer goods are expressive works or that the Rogers test applies to them. In that case, the court applied the Rogers test to a non-profit organization’s non-commercial use of the phrase “NAACP: National Association for the Abortion of Colored People” in the headline of an article that criticized the NAACP’s stance on abortion. Indeed, the Fourth Circuit expressly stated: “Titles, as part of expressive works, ‘require[ ] more protection than the labeling of ordinary’ goods.” Id. at 329 (quoting Rogers, 875 F.2d at 998). In neither Radiance Found. nor Louis Vuitton did the Fourth Circuit ever suggest that commercial products such as dog toys are entitled to First Amendment protection for their parodic expression.
There is no precedent for applying the Rogers test to consumer goods and placing the burden on an infringement or dilution plaintiff to show that the goods are not entitled to First Amendment protection. As the leading trademark treatise recognizes: “The Rogers test is not applicable if the [plaintiff’s] mark is used in a ‘commercial’ setting such as used as defendant’s mark in a traditional advertisement. It applies only if the use is in an expressive work such as a book, on-line commentary, motion picture or work of art.” McCarthy on Trademarks and Unfair Competition § 31:153 (5th ed. 2018). The Ninth Circuit’s holding that consumer goods may be expressive works will exempt from trademark liability any products that employ a modicum of creative expression on packaging or on products themselves, particularly given the Ninth Circuit’s recognition in E.S.S. Ent’mt that “the level of [artistic] relevance [to the underlying work] merely must be above zero” to entitle a work to protection under the first prong of the Rogers test. 547 F.3d at 1100. Moreover, even unsuccessful “parody” products that are likely to cause confusion could escape liability given the low threshold for artistic relevance.
Will this Decision be Put Down?
One can only hope that Jack Daniel’s will obtain a rehearing en banc or certiorari so that this dog of a decision can be overturned. Until then, brand owners, especially those subject to jurisdiction in the Ninth Circuit, should be vigilant about protecting their brands, and should take care to avoid laying the foundation for a declaratory judgment action in the Ninth Circuit should they need to challenge confusing or tarnishing commercial products that try to shield their infringement or dilution in the garb of parody.