On June 8, the Supreme Court ruled in a unanimous decision that VIP Products LLC (“VIP”) had infringed the trademarks of Jack Daniel’s Properties, Inc (“JDPI”) by selling a dog chew toy in the shape of a bottle of Jack Daniel’s Old No. 7 Brand Tennessee Sour Mash Whiskey. As further described below, the “Bad Spaniels” product also had a label that was a direct imitation of the Jack Daniel’s label but with different words.
Although this case bears striking similarity to Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC., the result in this case differs significantly based primarily on the specific use of the Jack Daniel’s trademarks by VIP. The facts that turned out to be dispositive in this case highlight the limitations of fair use and parody, and underline the importance of enforcement even in cases of seemingly atypical infringement.
VIP is a pet toy company selling a wide range of products, including a line of “Silly Squeakers” chew toys imitating well-known beverage brands. Examples of these products include chew toys branded “Mountain Drool,” “Doggie Walker,” “Smella Arpaw,” as well as the “Bad Spaniels” product at issue here. The “Bad Spaniels” chew toy is shaped like a Jack Daniel’s whiskey bottle, whose distinctive shape is itself a trademark owned by JDPI, and includes an imitation label prominently featuring the “Bad Spaniels” design and a parodic tagline “The Old No. 2 On Your Tennessee Carpet.” JDPI sued VIP for infringement of several of its trademarks. The United States District Court for the District of Arizona found in favor of JDPI, ruling that VIP both infringed and diluted the Jack Daniel’s trademarks. Upon appeal, the United States Court of Appeals for the Ninth Circuit reversed that decision as to the dilution claim but found that the well-known Rogers test from Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), applied to the issue of infringement, remanding to the lower court to apply the test. JDPI then filed a petition for a writ of certiorari, which the Supreme Court unexpectedly granted.
The Court found that the Rogers test did not apply here, as VIP was using the “Bad Spaniels” mark – using and parodying the Jack Daniel’s marks – as its own brand identifier. The Rogers test looks to whether a work at issue invoking a third party’s trademark is expressive and, if so, whether the use of that trademark is artistically relevant to the work, or whether the use of the trademark is explicitly misleading to consumers. In the past, courts have disagreed on the issue of whether and when the test applies. With this holding, the Supreme Court now appears to have made it clear that the Rogers test only applies for the purpose of assessing the non-trademark uses of an allegedly infringing trademark; that is, where a trademark is not being used as a source identifier, but to convey a message or some other artistic expression. Because VIP used the “Bad Spaniels” mark as a source identifier, the Rogers test was held not to apply. The Court remanded the case to the Ninth Circuit with directions to conduct a standard trademark analysis. As to the issue of dilution, the Court further clarified that the exclusion from liability for dilution in cases of parody does not apply when an infringer has made use of a trademark for its own brand identifier, as was the case here. Therefore, the Court vacated the Ninth Circuit’s decision as to dilution.
The most important takeaway from this case is arguably the clarity provided with respect to the applicability of the Rogers test and the holding that the test does not apply where an alleged infringer makes use of another’s trademark, whether as a parody or other artistic expression or commentary, as its own source identifier. It now appears to be the case that the Rogers test is appropriate only where the third party trademark is used solely for an expressive purpose. This case is thus distinguishable from Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC., which seems nearly identical at first glance. In Louis Vuitton, the use of the “borrowed” trademark was for a dog chew toy in the shape and distinctive style of a Louis Vuitton handbag which used the name: “Chewy Vuiton”; however, in that case, the use of the Louis Vuitton mark was deemed to be for comic effect, as a parody and not, according to the court, as a brand identifier. In the Jack Daniel’s case, VIP was found to have used the “Bad Spaniels” name and design as a brand name, featured prominently on the toy’s packaging. In the course of the litigation, VIP even conceded that it had used “Bad Spaniels” as a source identifier – that concession appears to have been pivotal.
In the final analysis, the case may succeed in drawing a brighter line between purely expressive works of parody and infringing uses of trademarks in their more traditional role as a source identifier. While artistic expression remains a paramount public interest, the protection of consumers from confusion in the marketplace cannot be displaced.
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