The Bad Spaniel Gets a Treat: VIP Products LLC v Jack Daniels Properties Inc

My own "Bad Spaniels" were good enough
to share this chair for a picture...
and they got a treat for it!

Sometimes, even a bad dog is good enough to get a treat. In 2018, VIP Products - the makers of several dog toys resembling well-known beverage bottles with dog themes - was reprimanded with a ruling of trademark infringement regarding their product, the "Bad Spaniels Silly Squeaker." 

Whiskey maker, Jack Daniels brought the claims against VIP, alleging trademark infringement and dilution by tarnishment of their trademarks and trade dress resulting from sales of the Bad Spaniels toy. The court agreed on both claims, permanently enjoining future commercial exploitation of the Bad Spaniels toy. 

VIP appealed this ruling to the 9th Circuit, arguing that the Jack Daniels bottle was aesthetically functional and lacked distinctiveness and thus, the trademark rights in the bottle should be cancelled. 

Additionally, VIP argued that its use of marks belonging to Jack Daniels constituted nominative fair use, exempt from liability. Although both of these arguments were rejected, the rulings of trademark infringement and dilution were vacated on a third ground on March 31, 2020; VIP argued that the Bad Spaniels toy is an expressive work, protected by the First Amendment.  Lets explore how the 9th Circuit addressed the use of trademarks in expressive works in VIP Products v. Jack Daniels Properties. 

Bad Spaniels

Background

As a Kat with two canine and two feline companions, I can attest all to well to the joy derived from bringing home a new toy for the furry ones. Although the pets may not notice, many such toys parody or reflect common, branded items. One such line of dog toys is the Silly Squeaker line, made by VIP Products. Each rubber squeak toy is made in the shape of a bottle of soda, beer, wine, or liquor; the shape, color, and labeling of the toys resemble various popular beverage brands, such as a yellow toy resembling a Corona beer bottle with the label CATAROMA EXTRA. Another example is a green toy resembling a Tanqueray gin bottle with the label TO SIT AND STAY.

Jack Daniels

The toy at issue, the Bad Spaniels resembles - in color and in shape - a bottle of Jack Daniels whiskey. The font and placement of text evokes the style of the Jack Daniels label, but is not an exact copy. Further, the text itself has been humorously replaced with dog-themed messages; the Jack Daniels bottle is labeled with the "Old No. 7 Brand" logo and the text "Tennessee Sour Mash Whiskey." The toy replaces this labeling with a possible explanation for why the "Spaniel" was "Bad"; the bottle is labeled "The Old No. 2 on your Tennessee Carpet." 

VIP Products released the Bad Spaniels toy in July of 2013; the next year, Jack Daniels demanded that VIP cease all further sales of the toy. In response, VIP Products filed suit in district court seeking a declaration of non-infringement, non-dilution, and that Jack Daniels was not entitled to trademark protection for its trade dress and bottle design. Jack Daniels counterclaimed, alleging trademark infringement and dilution by tarnishment. The district court agreed on both claims, rejecting VIP's nominative fair use and First Amendment defenses. The district court found trademark infringement and dilution by tarnishment, enjoining any future sales of the Bad Spaniels toy. 

9th Circuit - First Amendment

Although there is a natural tension between the principle of free expression and the zone of rights afforded under trademark protection, a balance is generally struck between the two through the likelihood of confusion test. However, when the unauthorized use of a protected mark occurs in relation to artistic expression, the 9th Circuit finds that the likelihood of confusion test fails to properly account for the public interest in free expression, and thus applies a distinct test for expressive works. 

Rogers Test - Threshold

The greeting cards derive from Chris Gordon's viral
video, The Crazy Nastyass Honey Badger

Outlined in Rogers v. Grimaldi, the Rogers test consists of three parts. First, as a threshold condition, the defendant's use must be determined to be an expressive work. Expressive works are those that “communicat[e] ideas or express[] points of view.” 

In 2018, the 9th Circuit ruled "with little difficulty" that a series of greeting cards depicting a honey badger with apathetic messages such as "Honey Badger Don't Care" was a series of expressive works. There, the juxtaposition of an apathetic statement with the context of a greeting card noting the recipient's birthday or a holiday conveyed a humorous message, protected under the First Amendment. 

Chewy Vuitton

Here, the 9th Circuit also found that the defendant's use conveyed a humorous message, protected as an expressive work under the First Amendment protection for free expression. This use is expressive by the replacement of the serious messages in the labeling of the Jack Daniels bottle with silly messages such as "The Old No. 2." The court noted that this reflects the "Chewy Vuitton" line of dog toys created by Haute Diggity Dog which successfully parodied Louis Vuitton. 

The district court ruled that VIP was ineligible for the First Amendment defense because the Bad Spaniels toy was "a somewhat non-expressive, commercial product." The 9th Circuit overturned this holding because the toy is an effort to create a transformative work, conveying a new message; it is "irrelevant" that the message was conveyed via a dog toy. Because the Bad Spaniels toy is an expressive work, the 9th Circuit vacated the district court's findings of trademark infringement and dilution by tarnishment. Additionally, the Court vacated the permanent injunction against VIP.

Rogers Test - Two Prong Analysis

Once it is established that the defendant's use of a mark consists of an expressive work, a two prong analysis is applied; if the plaintiff can establish either prong, the Lanham act is applicable. If not, the defendant's use falls outside of the Lanham act and does not constitute trademark infringement.

"The plaintiff must show that 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' in order to satisfy the Rogers test."

Although the 9th Circuit ruled that the Bad Spaniels toy is an expressive work, the Court remanded to the district court for application of the two prongs of the Rogers test. 

Comment

Applying the Rogers Test

Although the 9th Circuit declined to apply the Rogers test, this Kat finds it unlikely that the Bad Spaniels toy satisfies either prong. The toy is artistically relevant, as it is meant to evoke the Jack Daniels bottle design and trademarks through its shape, color, and labeling for the humorous juxtaposition of a dog using a human product. The artistic relevance may be further accentuated by the fact that dogs cannot and should not drink alcohol, as referenced by the name, Bad Spaniel. 

Regarding the second prong, it seems difficult to believe that consumers are explicitly misled as to the source or content of the work by the Bad Spaniels toy. Replacing "Old No. 7 Brand" with "The Old No. 2" is not the sort of image that one may expect Jack Daniels to seek to portray, were it to begin making dog toys. Nothing about the toy suggests an association between the producer of the Bad Spaniel and the makers of Jack Daniels whiskey. 

Will the circuit split be resolved without a Kat fight?

Expanding the Rogers Test

Regardless of how the district court applies the Rogers test in this case, the 9th Circuit has expanded the Rogers test with its ruling in VIP Products v. Jack Daniels. Generally, the Rogers test has been applied to products that are clearly expressive works, such as films, songs, and video games. Although the 9th Circuit expanded the concept of expressive works to include promotional products relating to a TV show regarding the show, Empire, that case concerned the scope of allowable use surrounding a clearly expressive use - namely, a TV show. Bad Spaniels, by contrast, is a dog toy; such is not typically considered to be a vehicle for expression. This expansion of expressive works is likely to form another fault line in the circuit split over the Rogers test.