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Ninth Circuit Holds “Bad Spaniels” Dog Toy Is an “Expressive Work”

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By Anne Bolamperti and David G. Barker

The Ninth Circuit Court of Appeals recently held in VIP Products LLC v. Jack Daniel’s Properties, Inc. that the “Bad Spaniels” dog toy is an expressive work entitled to First Amendment protection. The court vacated the United States District Court for the District of Arizona’s judgment that the toy infringed the Jack Daniel’s trade dress and registered bottle design.

VIP Products designs and sells rubber dog toys that employ entertaining adaptations of various beverage brands.  Beginning in July 2013, VIP began selling the “Bad Spaniels” version of the toy, which resembles the iconic Jack Daniel’s Old No. 7 Black Label Tennessee Whiskey bottle. Among other differences, the toy replaces “Jack Daniel’s” with “Bad Spaniels” and the alcohol content information with “43% POO BY VOL.” and “100% SMELLY.”

Jack Daniel’s demanded that VIP stop selling the toy. VIP then filed suit, seeking a declaration that the toy did not infringe Jack Daniel’s trademark rights. Alternatively, VIP sought a declaration that the Jack Daniel’s trade dress and bottle design were not entitled to trademark protection. Jack Daniel’s responded with a counterclaim for trademark infringement and dilution. The district court issued a permanent injunction barring VIP from making and selling the toy.

On appeal, the Ninth Circuit affirmed the district court’s ruling that the Jack Daniel’s trade dress and bottle design were distinctive, non-generic, and nonfunctional and thus qualified for trademark protection. Additionally, the court affirmed the district court’s rejection of VIP’s nominative fair use defense, because VIP’s toy was significantly different from the Jack Daniel’s trade dress and bottle design.

But, vacating the judgment of infringement, the Ninth Circuit held the First Amendment protected the toy as an expressive work. The court relied on the Second Circuit’s Rogers v. Grimaldi test, and the Ninth Circuit’s application of it in Gordon v. Drape Creative, Inc., which requires the plaintiff to show that the defendant’s use of the mark either (1) is “not artistically relevant to the underlying work,” or (2) “explicitly misleads consumers as to the source or content of the work.” The court held, “the Bad Spaniels dog toy, although surely not the equivalent of the Mona Lisa, is an expressive work.” Accordingly, the court remanded the case for the district court to determine whether Jack Daniel’s can satisfy one of the two Rogers prongs.

This decision appears to be the first to recognize First Amendment protection in a product like VIP’s dog toy, joining, among others, decisions relating to movies, video games, songs, and greeting cards.