953 F.3d 1170
9th Cir.2020Background:
- VIP Products created the "Bad Spaniels Silly Squeaker," a dog toy that resembles a Jack Daniel’s bottle but replaces marks (e.g., “Jack Daniel’s” → “Bad Spaniels,” “Old No. 7” → “Old No. 2”) and adds humorous dog-related text.
- JDPI demanded VIP stop sales; VIP sued for a declaratory judgment that the toy did not infringe or dilute JDPI’s trademarks/trade dress and sought cancellation of the bottle-design registration. JDPI counterclaimed for infringement and dilution.
- The district court granted JDPI partial summary judgment, finding the Jack Daniel’s trade dress and bottle design distinctive and nonfunctional, and denied VIP’s nominative- and First Amendment–fair-use defenses.
- After a bench trial the district court found infringement and dilution by tarnishment and entered a permanent injunction against VIP.
- On appeal the Ninth Circuit affirmed the district court as to distinctiveness and nonfunctionality (and the validity of the registration), rejected nominative fair use, but held the Bad Spaniels toy is an expressive/parodic work entitled to First Amendment protection and therefore reversed the dilution ruling, vacated the infringement judgment, and remanded for Rogers analysis and further proceedings. The permanent injunction was vacated.
Issues:
| Issue | Plaintiff's Argument (JDPI) | Defendant's Argument (VIP) | Held |
|---|---|---|---|
| Aesthetic functionality / distinctiveness of bottle/trade dress | Bottle and label combination is distinctive and nonfunctional; registered design entitled to presumption of validity | Bottle elements are functional or nondistinctive; registration should be canceled | Affirmed: trade dress and bottle design are distinctive, nonfunctional; registration stands |
| Nominative fair use | VIP not entitled to nominative use because its mark is not identical | VIP argues reference to Jack Daniel’s is fair, descriptive of source/reference | Rejected: differences (spaniel image, altered text) preclude nominative fair use |
| First Amendment / expressive-work defense (Rogers) | Lanham Act likelihood-of-confusion test governs; infringement proven | Toy is expressive/parodic; Rogers test applies before trademark liability | Reversed/vacated infringement: Bad Spaniels is an expressive work; district court must apply Rogers prongs on remand |
| Trademark dilution by tarnishment | Use dilutes/tarnishes famous marks; commercial sale supports dilution claim | Use is noncommercial expression (parody/humor) despite sale; protected by First Amendment | Reversed: use is noncommercial expressive speech; VIP entitled to judgment on dilution claims |
Key Cases Cited
- Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (requirement that product design trade dress be nonfunctional and distinctive)
- Rogers v. Grimaldi, 875 F.2d 994 (2d Cir.) (test for application of Lanham Act to expressive works)
- Mattel, Inc. v. MCA Records, 296 F.3d 894 (9th Cir.) (adopting Rogers framework for expressive uses)
- Gordon v. Drape Creative, Inc., 909 F.3d 257 (9th Cir.) (extending Rogers beyond titles; balancing First Amendment and trademark law)
- Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir.) (upholding parody dog toys as noninfringing)
- Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir.) (definition of noncommercial expressive use in trademark context)
- Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042 (9th Cir.) (assessing trade dress distinctiveness and functionality)
- Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778 (9th Cir.) (functionality inquiry for design features)
- L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir.) (protecting expressive messages that use trademarks)
- Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir.) (distinguishing nontransformative copying from protected expression)