Ninth Circuit Report

• Jurisdiction: United States,Federal
• Author: Anne-Marie Dao
• Publication year: 2023
• Citation: Vol. 48 No. 1

NINTH CIRCUIT REPORT

Anne-Marie Dao

Sheppard Mullin

Spring is here, and with the season comes an update on dog chew toys shaped like alcohol! In a past issue of the Ninth Circuit Report, I covered a trademark case which was appealed to the Supreme Court. The Supreme Court denied certiorari, but further rulings prompted the Supreme Court to grant certiorari to answer the question of under what circumstances humorous use of another's mark as one's own mark on a commercial product constitutes trademark infringement or dilution.

BRIEF BACKGROUND

These first few sections are summarized and/or reprinted from Fall 2021's Ninth Circuit Report so if you're familiar with the case, just read the section titled "Everyone Loves A Good Joke."

If you have a dog, you've likely seen the squeaky toys that are shaped similarly to alcohol bottles. VIP Products LLC ("VIP Products") made a squeaky toy resembling JACK DANIEL'S® Tennessee whiskey. The dog toy at issue in this case was "Bad Spaniels," which according to Jack Daniel's Properties, Inc. ("Jack Daniels"), "copies the distinctive square bottle and black-and-white labelling of JACK DANIEL'S® Tennessee whiskey:¹

Bad Spaniels was introduced in 2014, selling through retailers such as Walmart and Amazon. Jack Daniel's asked VIP Products to stop selling the toy. VIP Products' response was to sue Jack Daniel's, seeking a declaratory judgment that Bad Spaniels did not infringe or dilute any of Jack Daniels' trademark rights.² Jack Daniels responded by filing federal and state-law counterclaims for infringement and dilution by tarnishment of its marks and trade dress.

THE DISTRICT COURT

The district court "ruled as a matter of law that Jack Daniel's established the first two elements of its infringement claims—i.e., the distinctiveness and nonfunctionality of its trademarks and trade dress."³ It also held that there were triable issues of fact as to the

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remaining element of Jack Daniels' infringement claims (whether VIP Products' use of Jack Daniel's marks created a likelihood of confusion). The district court rejected VIP Products' defense that its toy should receive heightened First Amendment protection under the Second Circuit's Rogers v. Grimaldi framework.⁴ Essentially, the district court limited the Rogers test "to the use of trademarks in the titles or contents of expressive or artistic works, such as movies, plays, books, and songs."⁵ The case went to trial, and the district court ruled in favor of Jack Daniels, finding that VIP Products' use of Jack Daniel's trademarks was likely to cause confusion.⁶

THE NINTH CIRCUIT

The Ninth Circuit "vacated the judgment in favor of Jack Daniel's on the infringement claims on the ground that the Bad Spaniels dog toy merited heightened First Amendment protection."⁷ The Ninth Circuit held that the toy was an expressive work because it communicated a humorous message.

JACK DANIELS' FIRST PETITION FOR A WRIT OF CERTIORARI (2021)

Jack Daniels' petitioned the Supreme Court for a Writ of Certiorari and presented the issue as follows:

The courts of appeals are divided over whether, to establish infringement under the Lanham Act, a plaintiff must make an evidentiary showing above and beyond a likelihood of confusion where a defendant uses a trademark to identify the origin or sponsorship of a commercial product in a humorous way. In such circumstances, six circuits hold that a plaintiff need only satisfy the traditional likelihood-of-confusion test and that the

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