Rogers continues to collapse into transformativeness in the Ninth Circuit: dog toy edition

VIP Products LLC v. Jack Daniel’s Properties, Inc., No. 18-16012 (9th Cir. Mar. 21, 2020)

VIP Products 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. For example, the name “Jack Daniel’s” is replaced with “Bad Spaniels,” “Old No. 7” with “Old No. 2,” and alcohol content descriptions with “43% POO BY VOL.” and “100% SMELLY.”

Jack Daniel’s sued for trademark infringement and dilution, and the district court enjoined the toy. The court of appeals found that the trade dress was nonfunctional and distinctive, but the dog toy was an expressive work entitled to First Amendment protection, so the district court decision was reversed and remanded for Rogers treatment.

VIP’s purported goal in creating Silly Squeakers was to “reflect” “on the humanization of the dog in our lives,” and to comment on “corporations [that] take themselves very seriously.” While the Jack Daniel’s label says, “Old No. 7 Brand Tennessee Sour Mash Whiskey;” the label on the Bad Spaniels toy instead has the phrase “the Old No. 2, on your Tennessee Carpet.” A tag states that the “product is not affiliated with Jack Daniel Distillery.”

The nominative fair use defense failed because VIP didn’t use the mark itself, but rather a changed version with “significant differences.” E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. 2008).

However, Rogers v. Grimaldi applied. Like greeting cards, “the Bad Spaniels dog toy, although surely not the equivalent of the Mona Lisa, is an expressive work.” It used “word play to alter the serious phrase that appears on a Jack Daniel’s bottle— ‘Old No. 7 Brand’— with a silly message— ‘The Old No. 2.’” In an attempt to distinguish the old Dr. Seuss case, the court says that book made “no effort to create a transformative work with ‘new expression, meaning, or message,’” while Bad Spaniels “comments humorously on precisely those elements that Jack Daniels seeks to enforce here.” [Note how Rogers is slowly collapsing into transformativeness in the Ninth Circuit—continuing Gordon v. Drape Creative.]

Vacated and remanded for Rogers analysis; although the district court is supposed to consider both prongs, it’s hard to see how it could find a lack of artistic relevance, and even after Gordon, the finding of transformativeness (and the fact that Jack Daniel’s doesn’t make parody dog toys) seems to dictate the result on explicit misleadingness.

Dilution: this is “noncommercial” speech—it does more than propose a commercial transaction—so there can be no dilution by tarnishment. The court phrases it in a weird way: “Although VIP used JDPI’s trade dress and bottle design to sell Bad Spaniels, they were also used to convey a humorous message.” Of course plenty of ads convey a humorous message; the issue here is that the dog toy is the product being sold, as opposed to being an ad for a separate product. That’s what makes it noncommercial speech, not the fact that it was humorous.

I guess it’s a better opinion than that in the Hummer/Activision case, which also reaches the right result with grimace-worthy reasoning?