Written by Marc E. Mayer and Theresa B. Bowman
In VIP Products v. Jack Daniel’s Properties, Inc., No. 18-16012 (9th Cir. March 31, 2020), the Court of Appeals for the Ninth Circuit held this week that a rubber dog toy designed to resemble a bottle of Jack Daniel’s Black Label Tennessee Whiskey — the “Bad Spaniels Silly Squeaker” — is an “expressive work” and therefore entitled to interpose a First Amendment defense against the whiskey company’s trademark infringement claims.
The lawsuit began in 2014 when Jack Daniel’s demanded that VIP Products stop selling the Bad Spaniels on trademark infringement grounds. The manufacturer filed suit asking an Arizona District Court to weigh in and determine whether the whiskey bottle was entitled to trademark protection at all. Jack Daniel’s responded with trademark infringement and trademark dilution claims, arguing that the dog toy diluted the commercial power, meaning and value of its brand by tarnishing what the image of the iconic whiskey bottle represents. The District Judge agreed with Jack Daniel’s that there was a high likelihood of consumer confusion between the products and ordered VIP Products to stop making and selling the Bad Spaniels toy.
In a 3-0 decision, the Ninth Circuit reversed the District Court’s decision. The Ninth Circuit agreed that Jack Daniel’s bottle design, namely the combination of its shape and label design, was entitled to trademark protection because it is distinctive, non-generic and nonfunctional. But the Court of Appeals also concluded that the “Bad Spaniels” toy was a protected “expressive work,” and therefore the District Court erred in assessing the likelihood of confusion factors without giving proper weight to the First Amendment interests. By concluding that the toy was an expressive work, the Ninth Circuit arguably broadened the scope of First Amendment protection accorded to consumer products facing claims of trademark infringement and dilution.
When faced with a consumer product alleged to have improperly used or appropriated another’s trademark, courts traditionally confront trademark infringement claims by assessing whether the junior user’s use is likely to cause consumer or marketplace confusion. Courts typically ask whether the use is likely to cause members of the public to believe that the junior user’s product or service is sponsored by, endorsed by, or affiliated with the senior user. In the Ninth Circuit, this analysis is assessed using a multi-factor test articulated in AMF v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979). However, when the use is in connection with an “expressive work,” such as a book, film, painting, or video game, courts have recognized that the enforcement of trademark rights carry a risk of inhibiting free expression. In such circumstances, the plaintiff first must prove that the use has (1) no artistic relevance to the underlying work, or (2) if the use has some artistic relevance, the use “explicitly misleads” as to the source or content of the work. This modified test, derived from the Second Circuit’s decision in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), has been applied to books, motion pictures, paintings, television programs, musical recordings, greeting cards, posters, and video games. However, the Rogers test has not generally been applied directly to consumer products such as toys, mugs, and apparel without a nexus between the consumer product and a corresponding literary, audiovisual, or artistic work (such as movie tie-in merchandise or promotional material). Instead, when analyzing the use of a trademark on a consumer product, courts most commonly apply the traditional “likelihood of confusion” factors, according some weight to parodic or humorous elements contained in or on the product.
VIP Products is notable because it represents the first time that a court squarely found a consumer product to be an expressive work for purposes of a trademark analysis. However, there is also reason to believe the opinion will prove primarily relevant to parody products. The Ninth Circuit focused on the humorous message conveyed by the dog toy. Bad Spaniels, with its “43% POO BY VOL.,” was primarily made to be funny –- and the Ninth Circuit concluded that this vaulted Bad Spaniels into the realm of artistic expression. The dog toy, observed the Court, is “surely not the equivalent of the Mona Lisa” but it does communicate a humorous message through word play that is “not rendered non-expressive simply because it is sold commercially[.]” According to the Court, it is Jack Daniel’s own “idealized image” of its brand as a representation of product excellence that sets the Bad Spaniels apart as artistic expression. “Bad Spaniels comments humorously on precisely those elements that Jack Daniels seeks to enforce here” by “juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner.”
In many respects, the Court’s conclusion is a natural evolution of the law. Many toys and consumer products are highly expressive in nature. A mug, bumper sticker, T-shirt, or figurine may communicate a variety of ideas or points of view. First Amendment principles dictate that the medium of the message –- whether a message appears on a physical product versus more “traditional” media such as a book, movie, or video game –- should not diminish its communicative nature. On the other hand, Trademark Infringement principles dictate that courts must be mindful to distinguish between products that are expressive in nature and those that simply appropriate preexisting brands in order to trade off their popularity. While in many instances, it will be easy to reconcile this tension, in others the line between appropriation and commentary may not be clear. It remains to be seen how courts will approach these issues going forward, and to what extent judges will find it necessary to address the difficult question of whether a particular product is sufficiently expressive to warrant First Amendment protection. In the meantime, the VIP Products decision should give some comfort to artists and creators that courts will not define the expressive nature of their work by the vehicle in which it is communicated. As for brand owners fighting against counterfeits or knock-offs, we expect that later decisions will clarify that their claims remain unaffected by this new decision. Overall, judges are still likely to give short shrift to purely pretextual or implausible invocations of the First Amendment.
 Among these decisions are four that were successfully handled by MSK: E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008); Novalogic, Inc. v. Activision Blizzard, Inc., 41 F. Supp. 3d 885 (C.D. Cal. 2013); Mil-Spec Monkey, Inc. v. Activision Blizzard, Inc., 74 F. Supp. 3d 1134 (N.D. Cal. 2014), and, most recently, AM General LLC v. Activision Blizzard, Inc., Case No. 17 Civ. 8644 GBD (S.D.N.Y. March 31, 2020).