Artistic Expression, Content Regulation / Censorship
Indibility Creative Pvt Ltd v. Govt of West Bengal
On Appeal Expands Expression
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The United States Court of Appeals for the Ninth Circuit held that the Bad Spaniels Silly Squeaker dog toy —designed to resemble a bottle of Jack Daniel’s whiskey— is a work of artistic expression subject to heightened First Amendment protections. VIP Products LLC (VIP) designed the Bad Spaniels dog toy to resemble a bottle of Jack Daniel’s, a well-known whiskey made by Jack Daniel’s Properties, Inc. (JDPI). JDPI demanded that VIP stop selling the dog toy, and VIP responded by seeking a declaratory judgment that the dog toy did not infringe on JDPI’s trademark or, alternatively, that the Jack Daniel’s trade dress and bottle design were not entitled to trademark protection. JDPI filed a counterclaim alleging infringement and dilution by tarnishment of its trademarks and trade dress. The district court found in JDPI’s favor—first at summary judgment, then after a bench trial. On appeal, the Ninth Circuit agreed with the district court that the Jack Daniel’s trade dress and bottle design were entitled to trademark protection. Nonetheless, the Court held that Bad Spaniels conveyed a humorous message and was therefore a work of artistic expression subject to heightened First Amendment protections, and that the district court had erred by finding otherwise. The case is currently pending before the United States Supreme Court.
VIP Products LLC (VIP) sells a line of rubber dog toys called “Silly Squeakers.” VIP designs its dog toys to resemble well-known drinks, including Mountain Dew (“Mountain Drool”), Coca-Cola (“Canine Cola”), Corona Extra (“Cataroma Extra”), and Miller Lite (“Killer Bite”). At issue in this case was VIP’s Bad Spaniels dog toy, which VIP modeled after a bottle of Jack Daniel’s whiskey. Where the Jack Daniel’s label reads, “Old No. 7 Brand Tennessee Sour Mash Whiskey,” the dog toy reads, “the Old No. 2, on your Tennessee Carpet.” VIP also replaced Jack Daniel’s alcohol content descriptions with “43% POO BY VOL.” and “100% SMELLY.” The dog toy prominently features a chagrined-looking spaniel on the front.
Jack Daniels Properties Inc. (JDPI) objected to the dog toy’s design and, in 2014, demanded that VIP stop selling the Bad Spaniels toy. VIP sued, seeking a declaration that its product did not infringe on or dilute JDPI’s trademark rights or, alternatively, that the Jack Daniel’s trade dress and bottle design were not entitled to trademark protection. JDPI counterclaimed, alleging infringement and dilution by tarnishment of its trademarks and trade dress.
The district court granted partial summary judgment to JDPI, finding as a matter of law that the Jack Daniel’s trade dress and bottle design were entitled to trademark protection, and rejecting VIP’s nominative fair use and First Amendment defenses. After a bench trial, the district court found that JDPI had established dilution by tarnishment and infringement of its trademark and trade dress, and it permanently enjoined VIP from selling the Bad Spaniels dog toy. VIP appealed the decision before the United States Court of Appeals for the Ninth Circuit.
Judge Andrew D. Hurwitz delivered the opinion for the United States Court of Appeals for the Ninth Circuit, which considered whether VIP’s dog toy —which resembled a bottle of Jack Daniels whiskey— was an expressive work, in light of its humorous message, thus deserving of First Amendment protection against trademark infringement claims. To analyze this issue, the Court studied whether the district court had (i) correctly found that the Jack Daniel’s trade dress and bottle design were entitled to trademark protection, (ii) correctly rejected VIP’s nominative fair use defense, (iii) correctly rejected VIP’s First Amendment defense, and (iv) correctly found in favor of JDPI on its dilution by tarnishment claims.
VIP contended that the Jack Daniel’s trade dress and bottle design were not entitled to trademark protection, but the Court disagreed and affirmed the district court on this issue. A product is only subject to trademark protection if its trade dress or design are both distinctive and non-functional. Courts must consider the elements of a product’s design together, not individually, to make that determination. The Court reasoned that although other whiskey companies use many of the individual elements found on the Jack Daniel’s bottle, when considered together, the bottle and label elements were nonfunctional and distinctive, entitling Jack Daniel’s to trademark protection.
Next, the Court quickly disposed of VIP’s asserted nominative fair use defense. That defense applies only where the challenged mark is identical to the plaintiff’s mark. The Court pointed out that there were significant differences between the Jack Daniel’s label and the Bad Spaniels toy—the dog toy, for example, displayed humorous phrases and an image of a spaniel. Accordingly, the Court held that the defense failed.
The Court then turned to VIP’s First Amendment defense to JDPI’s trademark infringement claims and held that the district court had erred when it applied the Lanham Act’s likelihood-of-confusion test to JDPI’s claims instead of the test articulated in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). The Court cited Gordon v. Drape Creative, Inc., 909 F.3d 257, 263 (9th Cir. 2018), which provides that the purpose of the Lanham Act, which regulates the use of trademarks, is to protect the rights of trademark owners and to ensure that consumers are able to distinguish among competing producers. The aptly named likelihood-of-confusion test “seeks to strike the appropriate balance between the First Amendment and trademark rights” [p. 3] by asking whether the defendant’s use of a valid, registered trademark is likely to cause confusion. Relying on Gordon, the Court reasoned that when artistic expression is at issue, the likelihood-of-confusion test does not give proper weight to the public’s interest in free expression, and the more stringent Rogers test applies. That test requires that a “plaintiff show that the defendant’s use of the mark is either (1) not artistically relevant to the underlying work, or (2) explicitly misleads consumers as to the source or content of the work” [p. 3].
The district court had determined that Bad Spaniels was primarily a non-expressive, commercial product, not an expressive work, and it had applied the likelihood-of-confusion test. The Ninth Circuit Court disagreed. It compared this case to the facts of Gordon, in which the Court held that greeting cards that used the trademarked phrases “Honey Badger Don’t Care” and “Honey Badger Don’t Give a S—t” were expressive works [p. 3]. The Court pointed out that an expressive work does not need to “be the expressive equal of Anna Karenina or Citizen Kane,” [p. 3] it must simply communicate an idea or express a point of view. In Gordon, the Court had little difficulty deciding that the greeting cards did so, and were thus expressive works, and it came to the same conclusion regarding Bad Spaniels. The Court reasoned that although Bad Spaniels was “surely not the equivalent of the Mona Lisa,” [p. 4] its alterations to the Jack Daniel’s label were intended to communicate a humorous message. It was irrelevant to the Court’s analysis that VIP chose to communicate that message through a dog toy.
The Court also pointed out that the Fourth Circuit Court’s decision in Louis Vuitton Malltier S.A. v. Haute Dog, LLC, 507 F.3d 252 (4th Cir. 2007) supported the conclusion that the Bad Spaniels toy was an expressive work. In that case, the Court concluded that dog toys that resembled small Louis Vuitton handbags were successful parodies of real Louis Vuitton handbags, and thus did not infringe on the Louis Vuitton trademark. The Ninth Circuit Court held that when it considered the Bad Spaniels toy, “[n]o different conclusion [was] possible” [p. 4]. Like the dog toys in Louis Vuitton —which were named Chewy Vuiton and were decorated with CV monograms that mimicked the LV mark on Louis Vuitton bags—, the Bad Spaniels toy was designed to mimic the Jack Daniel’s bottle and trade dress. Accordingly, the Court held that Bad Spaniels was an expressive work and that the district court had erred by failing to apply the Rogers test to JDPI’s claims.
The Court briefly considered the fourth issue and held that VIP was entitled to judgment in its favor on JDPI’s federal and state law dilution by tarnishment claims. The Court cited Nissan Motor Co. v. Nissan Comput. Corp., 378 F.3d 1002, 1017 (9th Cir. 2004), which outlines the rule that speech is noncommercial if it does more than propose a commercial transaction. The Court reasoned that because the Bad Spaniels dog toy conveyed a humorous message, it did more than propose a commercial transaction, and thus was noncommercial speech. As such, the First Amendment protected VIP from JDPI’s dilution claims.
The Ninth Circuit affirmed in part, reversed in part, vacated the permanent injunction, and remanded for the district court to consider whether JDPI could satisfy the Rogers test. On remand, the district court found that JDPI could not, and it entered judgment in favor of VIP. JDPI appealed, and the Ninth Circuit affirmed.
The United States Supreme Court granted certiorari to determine whether the humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s likelihood-of-confusion analysis, or instead entitled to heightened First Amendment protection.
Decision Direction indicates whether the decision expands or contracts expression based on an analysis of the case.
The Ninth Circuit’s decision in VIP Products LLC v. Jack Daniel’s Properties, Inc. expanded the kinds of expression that qualify for heightened First Amendment protection in the Ninth Circuit. This opinion, along with the Court’s earlier decision in Gordon, firmly establishes that the Ninth Circuit will consider even a product with broad commercial appeal to be a work of artistic expression if it communicates a humorous message. The opinion also reaffirms the Ninth Circuit’s use of the Rogers test to determine whether expressive works are protected from trademark infringement claims, and it provides helpful guidance for those seeking First Amendment protections against such claims going forward.
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