Naughty no more, VIP Products “Bad Spaniels Silly Squeaker” lives to see another squeak

VIP Products v. Jack Daniels, No. 18-16012, 9th Circuit, March 31, 2020.

A 9th circuit panel denied Jack Daniel’s their win and affirmed in part, vacated in part and reversed in part the district court’s judgement after a bench trial and permanent injunction in favor of Jack Daniel’s Properties, Inc., (“JDPI”) in a trademark suit brought by VIP Products, LLC (“VIP”) concerning VIP’s “Bad Spaniels Silly Squeaker” dog toy, shown below next to a bottle of Jack:

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The opinion notes that over a million Silly Squeakers were sold from 2007 to 2017, so though silly, these squeakers generated some serious cash for VIP.  And so it must come as no surprise that when JDPI demanded that VIP stop selling the toy, VIP responded by filing a declaratory judgment action.   It should also come as no surprise that when the district court handed VIP a loss including a permanent injunction prohibiting FIP from manufacturing and selling the Bad Spaniels dog toy, that VIP appealed.

The district court found as a matter of law that JDPI’s trade dress and bottle design were distinctive, non-generic, and nonfunctional, and therefor entitled to trademark protection – a finding that the 9th circuit affirmed.  VIP’s request to cancel the registered mark was thus rejected.  The 9th circuit also affirmed the district court’s rejection of VIP’s nominal fair use defense, citing Playboy Enters., Inc. v. Welles, 279 F.3d 796, 801 (9th Cir. 2002)(finding nominative fair use defense did not apply where mark was “not identical to plantiff’s mark).

VIP’s first amendment defense fared better.  After explaining that “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,” the 9th circuit vacated and remanded to the district court on the issue of the first amendment defense.  In analyzing whether a work can be considered expressive, the court noted that the work “need not be the ‘expressive equal to Anna Karenina or Citizen Kane.” Nor, stated the 9th circuit, is a work “rendered non-expressive simply because it is sold commercially.”

Instead, referring to their own decision in Gordon v. Drape Creative, Inc., 909 F.3d 257 (9th Cir. 2018) in which certain trademarked Honey Badger phrases combined with event announcements were held “expressive works”, the 9th Circuit stated:

Like the greeting cards in Gordon, the Bad Spaniels dog toy, though surely not the equivalent of the Mona Lisa, is an expressive work.

The 9th Circuit continued their analysis under the Fourth’s Circuit decision in Louis Vuitton :

The Fourth Circuit’s decision in Louis Vuitton Malletier S.A v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007) supports our conclusion.  That opinion held that dog toys which “loosely resemble[d]” small Louis Vuitton handbags were “successful parodies of LVM handbags and the LVM marks and trade dress” and therefor did not infringe the LVM trademark.  Id. at 258, 260, 263.  The Fourth Circuit reasoned that although “[t]he dog toy is shaped roughly like a handbag,; its name ‘Chewy Vuiton’ sounds like and rhymes with LOUIS VUITTON; its monogram CV mimics LVM’s LV mark; the repetitious design clearly imitates the design on the LVM handbag; and the coloring is similar,” “no one can doubt…that the ‘Chewy Vuiton’ dog toy is not the ‘idealized image’ of the mark created by LVM.” No different conclusion can be reached here.

Because Bad Spaniels was held to be an expressive work, the 9th circuit held that the district court had erred in finding trademark infringement without requiring JDPI to show that VIP’s use of JDPI’s mark was either 1) not artistically relevant to the underlying work or 2) explicitly misleads consumers as to the source or content of the work.  The 9th Circuit vacated the district court’s finding of infringement, remanded, and in the meantime, also vacated the permanent injunction.  Squeak on, good girls and boys everywhere, squeak on.