Wednesday, April 1, 2020
Injunction Was Issued Without Requiring Whisky-Maker to Show That Either Prong Was Met of Test for Enjoining an Expressive Work as an Infringement, Opinion Declares
By a MetNews Staff Writer
Above is the squeaker toy the manufacturing and sale of which was enjoined by a District Court judge. The Ninth U.S. Circuit Court of Appeals yesterday ordered the injunction vacated.
The Ninth U.S. Circuit Court of Appeals yesterday ordered that a permanent injunction be vacated against a company manufacturing and marketing a squeaking toy that resembles a bottle of Jack Daniel’s whisky, holding that the First Amendment defense of the alleged infringer was accorded inadequate attention.
The toy—VIP Products, LLC’s “Bad Spaniels Silly Squeaker”—is one item in a line of toys that parody beverages including Mountain Dew, beers and wines.
Judge Andrew D. Hurwitz wrote for a three-judge panel in declaring that the District Court failed to require the maker of Jack Daniel’s to satisfy the “Rogers test”—named after an 1989 Second Circuit opinion in which actress Ginger Rogers (now deceased) unsuccessfully contested the right of producers to use her identity in the Federico Fellini movie, “Ginger and Fred.”
(An actress portrayed not Rogers, herself, but an imitator of her, and Marcello Mastroianni played an imitator of dancer/actor Fred Astaire. The real Astaire and Rogers co-starred in 10 films.)
The Rogers test was adopted by the Ninth Circuit in 2002 in Mattel, Inc. v. MCA Records in which a toy company argued that use of the song “Barbie Doll” on an album infringed its product. The test requires a plaintiff to show that use of its mark in an expressive work is “not artistically relevant to the underlying work” or “explicitly misleads consumers as to the source or content of the work.”
No such showing was required of the cross-complainant, Jack Daniel’s Properties, Hurwitz said.
“[T]he Bad Spaniels dog toy, although surely not the equivalent of the Mono Lisa, is an expressive work….The toy communicates a ‘humorous message…, using word play to alter the serious phrase that appears on a Jack Daniel’s bottle—‘Old No. 7 Brand’—with a silly message—‘The Old No. 2.’ ”
He said the message was, as in a 1987 First Circuit opinion, “that business and product images need not always be taken too seriously.” Hurwitz continued:
“Bad Spaniels comments humorously on precisely those elements that Jack Daniel’s seeks to enforce here….The fact that VIP chose to convey this humorous message through a dog toy is irrelevant.”
The matter was remanded for a determination as to whether either prong of the Rogers test is satisfied.
The opinion reverses the District Court not only on the issue of infringement, but also in the issue of dilution of the mark by tarnishment, which was found in favor of the whisky-maker.
Hurwitz said that although VIP used the Jack Daniel’s “trade dress and bottle design to sell Bad Spaniels, they were also used to convey a humorous message” and that message “is protected by the First Amendment.” VIP, he declared, “was entitled to judgment in its favor on the federal and state law dilution claims.”
It was VIP that brought the action, in response to demands that it cease selling toys imitating Jack Daniel’s bottles. The opinion affirms summary judgment in favor of Jack Daniel’s Properties in the action against it challenging its mark.
“To obtain trademark protection, a product’s trade dress or design must be nonfunctional and distinctive,” Hurwitz recited, saying that VIP failed to rebut the presumption of nonfunctionality and distinctiveness created by trademark registration.
The case is VIP Products v. Jack Daniel’s Properties, 18-16012.
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