Ninth Circuit axes Jack Daniel’s TM win on First Amendment grounds
A dog toy based on the design of a bottle of Jack Daniel’s whiskey could be protected from trademark infringement claims on the grounds of free expression, a US federal court has ruled.
In a ruling issued yesterday, March 31, the US Court of Appeals for the Ninth Circuit ruled that VIP Products’ “Bad Spaniels Silly Squeaker” toy was an “expressive work entitled to First Amendment protection”.
The case has now been sent back to the US District Court for the District of Arizona, where the whiskey brand will have to prove that VIP’s use of its trademarks is “not artistically relevant”.
Jack Daniel’s sued VIP over the Bad Spaniels toy, which resembles a bottle of the distiller’s Old No. 7 Black Label Tennessee Whiskey, at the Arizona court in 2014.
According to VIP, the intention of the toys, which sold more than a million units over ten years, was to comment on the “humanisation of the dog in our lives” as well as “corporations [that] take themselves very seriously”.
But the Arizona court sided with Jack Daniel’s, finding that VIP had infringed the brand’s trademarks, and issued an injunction against the further manufacture and sale of the Bad Spaniels toys.
VIP raised four different defences, including fair use and protection under the First Amendment, but the district court ruled in favour of Jack Daniel’s on each.
But the Ninth Circuit has now reversed this judgment on appeal. According to the appeals court, the Bad Spaniels toy, “although surely not the equivalent of the ‘Mona Lisa’, is an expressive work”, meaning that it is protected under the First Amendment.
According to the court, the toys used a “humorous message” that “juxtapos[ed] the irreverent representation of the trademark with the idealised image created by the mark’s owner”.
The court invoked a 2007 precedent from the US Court of Appeals for the Fourth Circuit, which ruled that handbag-shaped ‘Chewy Vuiton’ dog toys did not infringe the French fashion house’s trademark.
The Ninth Circuit said “no different conclusion is possible” in relation to Bad Spaniels.
The Ninth Circuit remanded the case back to the district court for further proceedings. As the toy is an expressive work, Jack Daniel’s has to prove that the use of its mark is not an “artistically relevant” element of the work in order to claim trademark infringement.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox.
Today’s top stories:
IPOS boosts adjudicator bench to cement Singapore as ADR hub
USPTO waives filing and fee deadlines amid pandemic
Nokia says door is open for Daimler talks as EU seeks answers
