VIP Prods. Ltd. Liab. Co. v. Jack Daniel's Props. - 953 F.3d 1170 (9th Cir. 2020)

Rule:

To obtain trademark protection, a product's trade dress or design must be nonfunctional and distinctive. The proper inquiry is not whether individual features of a product are functional or nondistinctive but whether the whole collection of features taken together are functional or nondistinctive. When artistic expression is at issue, however, the general likelihood-of-confusion test fails to account for the full weight of the public's interest in free expression. Accordingly, the Lanham Act only applies to expressive works if the plaintiff establishes one of the two requirements in the test set forth in Rogers v. Grimaldi. Rogers requires the plaintiff to 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.

Facts:

Plaintiff VIP Products sells the Bad Spaniels Silly Squeaker dog toy, which resembles a bottle of defendant’s Jack Daniel's Old No. 7 Black Label Tennessee Whiskey, but has light-hearted, dog-related alterations. After defendant demanded that plaintiff cease selling the toy, plaintiff filed this action, and sought a declaration that the toy did not infringe defendant’s trademark rights or, in the alternative, that defendant’s trade dress and bottle design were not entitled to trademark protection. Defendant counterclaimed, asserting trademark infringement and dilution. After trial, the district court found in favor of defendant and issued a permanent injunction enjoining plaintiff from manufacturing and selling the Bad Spaniels toy.

Issue:

Did the district court err in its decision in this this trademark action?

Answer:

Yes.

Conclusion:

The court ruled that in this trademark action under 15 U.S.C.S. §§ 1114 and 1125 and state law, between plaintiff- the manufacturer of a dog toy that parodied a whiskey bottle and defendant- the whiskey seller, the court vacated the district court's judgment on infringement because the dog toy was an expressive work entitled to U.S. Const. amend. I protection, also, the district court erred in finding trademark infringement without first requiring the whiskey seller to satisfy at least one of the two prongs of the Rogers test. On the second issue, the court reversed the district court's judgment on claims of trademark dilution by tarnishment under § 1125(c)(3)(C) and Ariz. Rev. Stat. § 44-1448.01(C)(2) because although the toy manufacturer used the whiskey seller's trade dress and bottle design, they were also used to convey a humorous message, which was protected by the U.S. Const. amend. I.