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Trademark Infringement and the First Amendment: Squeaky Whiskey Bottle Chew Toys and What Legal Test Applies

By John DiGiacomo

A few years ago, a company called VIP Products, Inc. (“VIP”) created and began selling a plastic squeaky dog chew toy in the shape of a whiskey bottle meant to parody a Jack Daniel’s whiskey bottle. In general, VIP sells a whole line of squeaky dog toys called “Silly Squeakers” VIP sold over a million of the toys from 2007 to 2017. In 2013, VIP introduced the “Bad Spaniels” toy which, as noted, was/is in the shape of a Jack Daniel’s bottle. The toy had/has an image of a spaniel over the words “Bad Spaniels” and contains the phrase “the Old No. 2, on your Tennessee Carpet.” The Jack Daniel’s label says: “Old No. 7 Brand Tennessee Sour Mash Whiskey.” Further, the normal alcohol content descriptions found on the Jack Daniel’s bottle were changed to say “43% POO BY VOL.” and “100% SMELLY.” Finally, VIP affixed a tag to the Bad Spaniels squeaker toy that said the “product is not affiliated with Jack Daniel Distillery.”

When the Bad Spaniels toy was first marketed and sold, Jack Daniel’s Distillery was not amused and immediately sent VIP a cease and desist letter claiming, among other things, infringement of its trademarks. VIP then filed suit in a federal court in California seeking a declaration from the court that there was no infringement.

With respect to the trademark infringement claim, VIP argued that the Bad Spaniels squeaker toy did not constitute trademark infringement because it was an “expressive work.” Generally speaking there is a legal tension between trademark law and the First Amendment. Trademark law allows owners of trademarks to prevent others from using trademarks. This is a form of speech suppression, a denial of free speech. By contrast, the First Amendment protects free speech and free expression. As a quick example, you can find yourself in legal hot water if you disparage a trademark. But you can disparage a politician without consequence.

In trademark cases, the courts use two different tests depending on whether a free speech/First Amendment issue is raised. In most cases, an owner of a trademark must prove “likelihood of confusion” between the existing trademark and the one that is alleged to be infringing. As we have discussed here, the courts use an eight-factor test to evaluate likelihood of confusion. However, when there is a claim that an “expressive work” is involved, the courts use a different test, generally referred to as the “Rogers Test” named after the case that established it. See Rogers v. Grimaldi, 875 F. 2d 994 (US 2nd Cir. 1989).

Under the Rogers test, to prove infringement, a trademark owner must show the infringing use of their trademark (1) is not “artistically relevant” or (2) that, even if artistic, use of the trademark “explicitly misleads consumers.”

As noted, at the trial level, VIP argued that the Bad Spaniels squeaky toy was an “expressive work.” However, the trial court rejected that claim as a matter of law.

Eventually, the case was appealed and, on the point of whether the chew toy was expressive, the Ninth Circuit Court of Appeals reversed the trial court. The court held — as a matter of law — that the Bad Spaniels dog toy WAS an expressive work entitled to the protection of the First Amendment. The court admitted that the dog toy was “… surely not the equivalent of the Mona Lisa,” but, nonetheless, it was an expressive work. The court acknowledged that the dog toy offers a “humorous message” which, as the court explained, is actually part of the expressive message. According to the court, by “juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner,” the dog toy conveyed a “simple message” “that business and product images need not always be taken too seriously.” That is a lot of meaning in a simple dog toy. The artistic meaning can be made even deeper by a pointing out something that the court did not mention: the trademark — disguised as a toy — is meant to be meant to be chewed on by a dog

In any event, based on its determination that the chew toy was an expressive work, the court sent the case back to the trial court requiring the lower court to apply the Rogers test. The court’s opinion can be found at VIP Products LLC v. Jack Daniel’s Properties, Inc., 953 F. 3d 1170 (9th Cir. March 31, 2020). Jack Daniel’s has asked the US Supreme Court to accept an appeal of the Ninth Circuit’s holding. It will be interesting to see if the High Court takes up the case.

For more information or if you have questions about creating and registering a trademark, contact the trademark lawyers at Revision Legal at 231-714-0100.

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