An update to my previous article on VIP Prods. LLC v. Jack Daniel's Properties, Inc., 953 F.3d 1170 (9th Cir. 2020) (available here):  Turns out that not everyone agrees with the Ninth Circuit’s (the “Court”) opinion that scatological puns are humorous artistic expressions.  

1.      Wait, what happened?

Recently in VIP, the Ninth Circuit:

(a)     Held that VIP’s “Bad Spaniels Silly Squeaker”—a chew toy for dogs—that looks similar to the Jack Daniel’s whiskey bottle but replaces certain words with scatological puns is an artistic expression; and

(b)     Reversed the district court’s determination, based on the likelihood of confusion test, that the Bad Spaniels dog toy infringes Jack Daniel’s trademarks;

(c)     Remanded the case back to the district court asking it to apply the Rogers test (elaborated here), which applies to artistic expressions.

Side by side comparison of the two products at-issue:

        Jack Daniel’s subsequently filed a rehearing petition.  The International Trademark Association (“INTA”), on April 22, 2020, filed an amicus brief (the “Brief”) with the Court in support of Jack Daniel’s rehearing petition.  For those of you who do not know, and per the Brief,

INTA is a not-for-profit organization dedicated to the support and advancement of trademarks and related intellectual property concepts as essential elements of trade and commerce.  INTA has more than 7,200 member organizations from 191 countries, including trademark owners, law firms, and other professionals who regularly assist brand owners in the creation, registration, protection, and enforcement of their trademarks.

The Brief essentially seeks to “ensure the proper application of” the Rogers test.  The Brief argues that the Court erred by “improperly extend[ing] Rogers to the use of trademarks on any commercial good arguably having some ‘expressive’ quality.”

2.      Why Does the INTA Think That?

          INTA begins by shining light on Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which set forth the “Rogers test.”  INTA argues that Rogers, which involved a Fellini film, only intended its test to apply to "indisputable artistic expressions," which per INTA a film is but a dog toy is not.  INTA points out that this Court has only extended the Rogers test to apply to songs, photographs, video games, television shows, and greeting cards.  For example, the Court in:

(a)     Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002) applied the Rogers test in a case involving the title of the song:  “Barbie Girl.”  The Court, analogizing with a case that involved an article with altered images of famous films, said,

The article featuring the altered image clearly served a commercial purpose: “to draw attention to the for-profit magazine in which it appear[ed]” and to sell more copies . . . Nevertheless, we held that the article was fully protected under the First Amendment because it included protected expression: “humor” and “visual and verbal editorial comment on classic films and famous actors” . . . Because its commercial purpose was “inextricably entwined with [these] expressive elements,” the article and accompanying photographs enjoyed full First Amendment protection.

The Court extended that reasoning to the Barbie Girl song and said that because it “also lampoons the Barbie image and comments humorously on the cultural values . . . she represents,” it is not purely commercial in nature.

(b)     Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003) applied the Rogers test in a case involving the title of a series of photographs: “Food Chain Barbie.”  Borrowing heavily from its MCA opinion, the Court held that the photographs were “artistic and parodic work[s]” and “noncommercial speech” because they did “more than just propose a commercial transaction.”

(c)     E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) applied the Rogers test in a case involving content and title of video games.  The Court said:

Under MCA Records and the cases that followed it, only the use of a trademark with “‘no artistic relevance to the underlying work whatsoever’” does not merit First Amendment protection . . . In other words, the level of relevance merely must be above zero. It is true that the Game is not “about” the Play Pen the way that Barbie Girl was about Barbie . . . But, given the low threshold the Game must surmount, that fact is hardly dispositive.

(d)    Twentieth Century Fox Television a division of Twentieth Century Fox Film Corp. v. Empire Distribution, Inc., 875 F.3d 1192 (9th Cir. 2017) applied the Rogers test in a case involving content and title of a television show (Empire), as well as to auxiliary products used to promote the television show.  The Court held that the Rogers test applies because a “television show itself is clearly an expressive work . . .as are the associated songs and albums.  Empire pointed out that Fox's use of the “Empire” mark “as an umbrella brand to promote and sell music and other commercial products,” however, falls outside of the “title or body of an expressive work” protected by the First Amendment.  However, the Court reasoned that “[t]he balance of First Amendment interests struck in Rogers and Mattel could be destabilized if the titles of expressive works were protected but could not be used to promote those works.”  As such, it extended the Rogers test to “auxiliary” commercial activities.

(e)     Gordon v. Drape Creative, Inc., 909 F.3d 257, 268 (9th Cir. 2018) applied the Rogers test in a case involving the content of greeting cards.  The Court said that a greeting card is an artistic expression because it

evinces ‘[a]n intent to convey a particularized message ..., and in the surrounding circumstances the likelihood was great that the message would be understood by those who viewed it . . . Each of defendants’ cards relies on graphics and text to convey a humorous message through the juxtaposition of an event of some significance—a birthday, Halloween, an election—with the honey badger’s aggressive assertion of apathy.  Although the cards may not share the creative artistry of Charles Schulz or Sandra Boynton, the First Amendment protects expressive works “[e]ven if [they are] not the expressive equal of Anna Karenina or Citizen Kane.

INTA argues that, unlike the subject matter of the above cases, "mundane dog toys," such as the Bad Spaniels dog toy, do not fit the mold of what warrants First Amendment protection because they primarily serve a commercial purpose.  In other words, per the INTA, the scatological puns on the Bad Spaniels dog toy, which rely on the Jack Daniel's brand, have no artistic relevance to the underlying work whatsoever.

3.      Now What?

          INTA is requesting the Court to do what the district court did in the first place—apply just the likelihood of confusion test and not the Rogers test beforehand.  INTA highlights the Fourth Circuit’s Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007) opinion in support.  Interestingly, (as you probably already know if you read my previous article on this) the Court in VIP used Louis Vuitton in support of applying the Rogers test.

         INTA points out that the Court’s reliance on Louis Vuitton is misplaced as the Fourth Circuit has never, neither in Louis Vuitton nor subsequently, said that the Rogers test applies to merely commercial goods.  INTA then highlights two more cases, albeit from district courts in other circuits, that applied the likelihood of confusion test for similar goods (i.e., dog accessories):

(a)     Anheuser-Busch, Inc. v. VIP Prods., LLC, 666 F. Supp. 2d 974 (E.D. Mo. 2008).  Anheuser alleged that VIP’s “Buttwiper” dog toys infringed and diluted its trade dress for Budweiser beer.  The court applied the likelihood of confusion test and found that Anheuser was likely to succeed on the merits and entered a preliminary injunction against VIP.

Notably, one of the relevant factors in the likelihood of confusion test was that Anheuser, unlike Jack Daniel's here, sold pet related items within its Budweiser brand.

(b)     Tommy Hilfiger Licensing Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 415 (S.D.N.Y. 2002).  Tommy Hilfiger alleged that Nature Labs’ “Timmy Holedigger,” a dog perfume, infringed and diluted its trademark.  The court applied the likelihood of confusion test and did not find that Hilfiger offered evidence of confusion.  As such, the court granted Nature Lab's motion for summary judgment on non-infringement.

Notably, the court pointed out that Nature Labs, much like VIP here, also produced products that parodied other brands.  The court viewed the other brands' "loud silence" regarding Nature Labs' parodies as evidence of lack of consumer confusion and stated,

Most of the companies that purvey these expensive human fragrances have chosen either to accept the implied compliment in this parody—that the mere association of their high-end brand names with a product for animals is enough to raise a smile—or, if they have taken offense, to suffer in silence.

Thus, if Jack Daniel’s rehearing petition is granted, the Court might revisit whether the Rogers test is indeed applicable here.  However, even if only the likelihood of confusion test is applied, it remains to be seen whether the final result will differ.  As the Court—agreeing with the Louis Vuitton conclusion that the Chewy Vuitton dog toys were successful parodies of Louis Vuitton bags—has already said, “[n]o different conclusion is possible here.”

*  The title, much like the article, makes more sense if you read the prequel (available here).