INTA Urges U.S. Court of Appeals Not to ‘Let the Dogs Out’

On April 22, INTA filed an amicus brief in the United States Court of Appeals for the Ninth Circuit in VIP Products, LLC. v. Jack Daniel’s Properties, Inc., 18-1233 (9th Cir.) (JDPI). Four members of INTA’s U.S. Amicus Subcommittee contributed to INTA’s brief: Subcommittee Chair David H. Bernstein (Debevoise & Plimpton LLP, USA), Marty Schwimmer (Leason Ellis LLP, USA), Vijay K. Toke (Pillsbury Winthrop Shaw Pittman LLP, USA), and Christian W. Liedtke, P.C. (acuminis, USA).

Facts and Procedural History

This case is between Jack Daniel’s, a US whiskey producer, and VIP Products, one of the largest manufacturers of dog toys in the United States. In late 2014, Jack Daniel’s sent VIP Products a cease and desist letter in connection with the sale of a squeaky dog toy named Bad Spaniels, which resembled the iconic Jack Daniel’s bottle.

 
Proving that barking dogs do bite, at least at times, VIP Products instituted a declaratory judgment action against Jack Daniels in VIP Product’s hometown court, the U.S. District Court in Arizona. Jack Daniel’s counterclaimed for, among others, trademark infringement and dilution by tarnishment.

Following a four-day bench trial, the district court ruled for Jack Daniel’s and issued a permanent injunction enjoining VIP Products from manufacturing and selling the Bad Spaniels Silly Squeaker toy. VIP Products appealed with some success. Most notably, the Court of Appeals for the Ninth Circuit, on March 31, reversed the district court’s decision as to the applicability of the so-called Rogers test. In that case, the Second Circuit held “that section 43(a) of the Lanham Act does not bar a minimally relevant use of a celebrity’s name in the title of an artistic work where the title does not explicitly denote authorship, sponsorship, or endorsement by the celebrity or explicitly mislead as to content.” Rogers v. Grimaldi, 875 F.2d 994, 1005 (2d Cir. 1989).

In light of its determination that the Bad Spaniels Silly Squeaker toy was an “expressive work,” the Ninth Circuit also reversed the district court’s decision on dilution. According to the Ninth Circuit, the Bad Spaniels Silly Squeaker toy used the JACK DANIEL’S design and mark to convey a “humorous message,” and that message was protected by the First Amendment.

INTA’s Amicus Brief

INTA’s amicus brief advances two arguments. First, INTA argues that the Ninth Circuit’s application of the Rogers test is unprecedented and inconsistent with the practice in other circuits since neither the Ninth Circuit nor any other court of appeals has previously applied that test to commercial goods. Instead, the Rogers test has consistently been limited to “artistic expression … not primarily intended to serve a commercial purpose” or “indisputabl[e] works of artistic expression.” Rogers, 695 F. Supp. at 120 and Rogers, 875 F.2d at 997, respectively. That is because commercial goods are not entitled to full First Amendment protection. World Wrestling Fed’n Entm’t, Inc. v. Big Dog Holdings, Inc., 280 F. Supp. 2d 413, 431, 446 (W.D. Pa. 2003). “The claim of parody is not really a separate ‘defense; as such, but merely a way of phrasing the traditional response that customers are not likely to be confused.” Id. 

VIP Products is no stranger to this assessment. In Anheuser-Busch, Inv. v. VIP Prods., LLC, a trademark infringement case concerning a similar dog toy fashioned after a Budweiser beer bottle, the District Court for the Eastern District of Missouri held “the cry of ‘parody!’ does not magically fend off otherwise legitimate claims of trademark infringement or dilution. There are confusing parodies and non-confusing parodies.” 666 F. Supp. 2d 974, 985 (E.D. Mo. 2008).

INTA’s position is in line with views held by many including the Honorable Pierre N. Level of the Court of Appeals for the Second Circuit who wrote: 

When lawsuits pit claims of exclusive trademark right against interests of free expression, courts should not run unnecessarily to the Constitution. The governing statutes … are designed to balance the needs of merchants for identification as the provider of goods with the needs of society for free communication and discussion.

Pierre N. Leval, “Trademark: Champion of Free Speech,” 27 Colum. J. L. & Arts 187, 210 (2004).
Second, while the Trademark Dilution Revision Act excludes “noncommercial use of a trademark” from liability (15 U.S.C. § 1125(c)(3)(C)), INTA argues that in this case, the Ninth Circuit short circuited the proper analysis. Specifically, the Supreme Court established a three-factor test for finding commercial speech in Bolger v. Youngs Drugs Prods. Corp. 463 U.S. at 66‒67. The factors are: 

1. Whether the material is an advertisement;
2. Whether the materials refer to a specific product; and
3. Whether the speaker has an economic motive.

In this case, the Ninth Circuit found, as a matter of law and ignoring the Bolger factors, that the dog toy was noncommerical because it conveyed a “humorous message” and therefore did “more than propose a commercial transaction.” JDPI, 953, F.3d at 1176.

The Ninth Circuit holding is a dangerous development for brand owners. It is particularly alarming because the Ninth Circuit previously held that “the level of [artistic] relevance [to the underlying work] merely must be above zero” for a product to qualify for First Amendment protection. E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1100 (9th Cir. 2008). In other words, under the Ninth Circuit’s most recent interpretation, the mere incorporation of a humorous element could shield a commercial product from trademark infringement claims and open the floodgates to widespread consumer confusion, eroding the good will of brand owners.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

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