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. Thats 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?

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