By: Demitri Dawson

Trademark infringement may have just gotten a little easier.  Later this year, the Supreme Court is likely to hear arguments on Jack Daniel’s Properties Inc. v. VIP Products LLC.[1]  This case presents intriguing questions about the application of the First Amendment to the Lanham Act.[2]  VIP Products LLC (VIP) manufactures and sells the “Bad Spaniels Silly Squeaker,” a dog toy that imitates the shape and design of the Jack Daniel’s whiskey bottle.[3]  It imitates the signature “Old No. 7” label by including a label that reads “The Old No. 2.”[4] When VIP began selling this product, Jack Daniel’s asserted that VIP must cease all sales as they were infringing on its trademark.[5]  In response, VIP sought declaratory judgment that its product did not infringe on the Jack Daniel’s trade dress and that the trade dress is not protectable.[6]  Jack Daniel’s counterclaimed on grounds of trademark infringement and dilution by tarnishment.[7]

The district court granted summary judgement in favor of Jack Daniel’s on both issues, finding that the trademark did meet the requirements for protection and that the Bad Spaniels toy infringed the mark and diluted it through tarnishment.[8]  The Court of Appeals for the Ninth Circuit, however, reversed the district court decision on the issue of trademark infringement and dilution.[9]  The Court explained that for a plaintiff to prevail on a trademark infringement claim, it must show that its mark warrants protection under the Lanham Act and that the alleged infringing mark will likely cause confusion as to the source of the product between the defendant and the plaintiff.[10]

But, the Ninth Circuit went on to highlight that VIP’s mark is “an expressive work,” which provides a defense against trademark infringement.[11] The Court held that expressive works, which it defined as anything “communicating ideas or expressing points of view,” get a heightened level of protection under the First Amendment.[12]  This expressive work exception developed in the late 1980s as a result of Rogers v. Grimaldi[13], a case in which the plaintiffs Ginger Rogers and Fred Astaire sought to enjoin the use of their names in the title of a movie called “Ginger and Fred.”[14]  The Second Circuit rejected their claim because the movie was an expressive work where the title of the movie was “artistically relevant to the underlying work” and the title was not something that “explicitly misleads consumers as to the source of the content or work.”[15]  These two factors make up what is now known as the Rogers test.[16]

Before the Ninth Circuit considered VIP’s claim, the expressive work exception was largely limited to things like books, movies, and other works that normally house “expressive” or “artistic” works.[17] However, the Ninth Circuit’s decision radically expanded this exception.  It found that the labeling on the Bad Spaniels toy uses humor to convey a message and create a juxtaposition between the Jack Daniel’s bottle and the design of the toy.[18]  Since the Court found that it fell under the expressive works exception, it remanded the trademark infringement issue to the district court to consider if the toy satisfies either prong of the Rogers test.[19]  Additionally, it reversed the district court’s decision on trademark dilution as trademarks cannot be diluted by “protected expression” even if that expression is attached to a commercial product.[20]

Jack Daniel’s filed a petition for certiorari and the Supreme Court has a chance to radically change the landscape of trademark protection.[21]  If the Supreme Court decides to affirm the decision of the Ninth Circuit, it will undermine the framework of trademark protection and leave brands across the country at the mercy of trademark infringers that subvert the Lanham Act by strategically designing products to contain some form of “artistic expression.” This seemingly low threshold will make it extremely difficult for companies to maintain control over their brand and effectively communicate product source to consumers.  As such, the Supreme Court needs to carefully consider the scope of the expressive work exception and realign the exception with its original purpose.[22]

[1] 953 F.3d 1170 (9th Cir. 2020).

[2] See Jack Daniel’s Properties Inc. v. VIP Products LLC, SCOTUSBLOG (Oct. 19, 2020), (listing Jack Daniels Prop. Inc. v. VIP Prods. LLC as a featured petition).

[3] Jack Daniel’s Props., Inc., 953 F.3d at 1172-73.

[4] Id.

[5] Id.

[6] Id.

[7] Id. at 1173.

[8] VIP Prods., LLC v. Jack Daniel’s Props., 291 F.Supp.3d 891, 910 (D. Ariz. 2018).

[9] Jack Daniel’s Props., Inc., 953 F.3d at 1174-75.

[10] Id. at 1173.

[11] Id. at 1174-75.

[12] Id.

[13] 875 F.2d 994, 996-97 (2d Cir. 1989).

[14] Id.

[15] Id. at 1003-05.

[16] Jack Daniel’s Props., Inc., 953 F.3d at 1176.

[17] See Rogers, 875 F.2d at 994-97.

[18] Jack Daniel’s Props., Inc., 953 F.3d at 1175.

[19] Id.

[20] Id.

[21] Thomas Key, The Bad Spaniel Gets a Treat: VIP Products LLC v Jack Daniels Properties Inc, The IPKat (May 7, 2020),

[22] Jared Kagan, Bad Spaniels Make Bad Law: Ninth Circuit Says Dog Toy is an Expressive Work Entitled to First Amendment Protection, IPWatchdog (Apr. 3, 2020), (labeling the decision by the Ninth Circuit Court of Appeals as bad law).

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