{"id":3357,"date":"2020-08-05T19:26:33","date_gmt":"2020-08-05T19:26:33","guid":{"rendered":"https:\/\/www.dekuzu.com\/en\/?p=3357"},"modified":"2020-08-04T19:28:59","modified_gmt":"2020-08-04T19:28:59","slug":"trademark-parody","status":"publish","type":"post","link":"https:\/\/www.dekuzu.com\/en\/2020\/08\/trademark-parody.html","title":{"rendered":"First amendment protection for trademark parody"},"content":{"rendered":"\n

\"\"VIP Products sells the \u201cBad Spaniels Silly Squeaker\u201d dog toy, which resembles a bottle of Jack Daniel\u2019s Old No. 7 Black Label Tennessee Whiskey, but has light-hearted, dog-related alterations. For example, the name \u201cJack Daniel\u2019s\u201d is replaced with \u201cBad Spaniels,\u201d \u201cOld No. 7\u201d with \u201cOld No. 2,\u201d and alcohol content descriptions with \u201c43% POO BY VOL.\u201d and \u201c100% SMELLY.\u201d<\/span><\/p>\n

<\/span><\/p>\n

After Jack Daniel\u2019s Properties, Inc. (\u201cJDPI\u201d) demanded that VIP cease selling the toy, VIP filed this action, seeking a declaration that the toy did not infringe JDPI\u2019s trademark rights or, in the alternative, that Jack Daniel\u2019s trade dress and bottle design were not entitled to trademark protection.<\/span><\/p>\n

JDPI counterclaimed, asserting trademark infringement and dilution. After ruling on cross-motions for summary judgment and conducting a four-day bench trial, the district court found in favor of JDPI and issued a permanent injunction enjoining VIP from manufacturing and selling the Bad Spaniels toy.<\/span><\/p>\n

The appeal has affirmed<\/a> the district court\u2019s summary judgment in favor of JDPI on the issues of aesthetic functionality and distinctiveness. However, because the Bad Spaniels dog toy is an expressive work entitled to First Amendment protection, the appeal has reversed the district court\u2019s judgment on the dilution claim, vacated the judgment on trademark infringement, and remanded for further proceedings.<\/span><\/p>\n

VIP designs, markets, and sells \u201cSilly Squeakers,\u201d rubber dog toys that resemble the bottles of various wellknown beverages, but with dog-related twists. VIP\u2019s purported goal in creating Silly Squeakers was to \u201creflect\u201d \u201con the humanization of the dog in our lives,\u201d and to comment on \u201ccorporations that take themselves very seriously.\u201d Over a million Silly Squeakers were sold from 2007 to 2017.<\/span><\/p>\n

In July of 2013, VIP introduced the Bad Spaniels squeaker toy. The toy is roughly in the shape of a Jack Daniel\u2019s bottle and has an image of a spaniel over the words \u201cBad Spaniels.\u201d<\/span><\/p>\n

The Jack Daniel\u2019s label says, \u201cOld No. 7 Brand Tennessee Sour Mash Whiskey;\u201d the label on the Bad Spaniels toy instead has the phrase \u201cthe Old No. 2, on your Tennessee Carpet.\u201d A tag affixed to the Bad Spaniels toy states that the \u201cproduct is not affiliated with Jack Daniel Distillery.\u201d<\/span><\/p>\n

In 2014, JDPI \u201cdemanded that VIP cease all further sales of the Bad Spaniels toy.\u201d VIP responded by filing action, seeking a declaration that the Bad Spaniels toy \u201cdoes not infringe or dilute any claimed trademark rights\u201d of JDPI and that Jack Daniel\u2019s trade dress and bottle design are not entitled to trademark protection.<\/span><\/p>\n

The complaint also sought cancellation of the Patent and Trademark Office registration for Jack Daniel\u2019s bottle design. JDPI counterclaimed, alleging state and federal claims for infringement of JDPI\u2019s trademarks and trade dress and dilution by tarnishment of the trademarks and trade dress.<\/span><\/p>\n

VIP moved for summary judgment, and JDPI crossmoved for partial summary judgment. The district court denied VIP\u2019s motion and granted JDPI\u2019s. The district court held that VIP was not entitled to the defenses of nominative and First Amendment fair use.<\/span><\/p>\n

The district court rejected the nominative fair use defense because VIP \u201cdid not use JDPI\u2019s identical marks or trade dress in its Bad Spaniels toy.\u201d The district court rejected JDPI\u2019s First Amendment defense because the trade dress and bottle design were used \u201cto promote a somewhat non-expressive, commercial product.\u201d<\/span><\/p>\n

The district court also found as a matter of law that Jack Daniel\u2019s trade dress and bottle design were distinctive, nongeneric, and nonfunctional, and therefore entitled to trademark protection. This left for trial only JDPI\u2019s dilution by tarnishment claims and whether JDPI could establish the likelihood of confusion for trademark infringement.<\/span><\/p>\n

The district court found that JDPI had established dilution by tarnishment and infringement of JDPI\u2019s trademarks and trade dress. The court permanently enjoined VIP \u201cfrom sourcing, manufacturing, advertising, promoting, displaying, shipping, importing, offering for sale, selling or distributing the Bad Spaniels dog toy.\u201d VIP appealed.<\/span><\/p>\n

Aesthetic Functionality and Distinctiveness<\/strong><\/span><\/h2>\n

To obtain trademark protection, a product\u2019s trade dress or design must be nonfunctional and distinctive. The district court correctly found Jack Daniel\u2019s trade dress and bottle design are distinctive and aesthetically nonfunctional. The Jack Daniel\u2019s trade dress \u201cis a combination of bottle and label elements,\u201d including \u201cthe Jack Daniel\u2019s and Old No. 7 word marks,\u201d.<\/span><\/p>\n

VIP also failed to rebut the presumption of nonfunctionality and distinctiveness of the Jack Daniel\u2019s bottle design, which is covered by Trademark Registration No. 4,106,178. None of the evidence cited by VIP demonstrates that, \u201ctaken together,\u201d the elements of the bottle design registration \u2013 including \u201can embossed signature design comprised of the word \u2018JACK DANIEL\u2019\u201d – are functional or nondistinctive. The district court therefore correctly rejected VIP\u2019s request for cancellation of the registered mark.<\/span><\/p>\n

Nominative Fair Use Defense<\/strong><\/span><\/h3>\n

The district court also correctly rejected VIP\u2019s nominative fair use defense. Although the Bad Spaniels toy resembles JDPI\u2019s trade dress and bottle design, there are significant differences between them, most notably the image of a spaniel and the phrases on the Bad Spaniels label. These differences preclude a finding of nominative fair use.<\/span><\/p>\n

First Amendment Defense<\/strong><\/span><\/h4>\n

The Bad Spaniels dog toy, although surely not the equivalent of the Mona Lisa, is an expressive work. The toy communicates a \u201chumorous message\u201d using word play to alter the serious phrase that appears on a Jack Daniel\u2019s bottle \u2013 \u201cOld No. 7 Brand\u201d – with a silly message \u2013 \u201cThe Old No. 2.\u201d<\/span><\/p>\n

The effect is \u201ca simple\u201d message conveyed by \u201cjuxtaposing the irreverent representation of the trademark with the idealized image created by the mark\u2019s owner.\u201d Bad Spaniels comments humorously on precisely those elements that Jack Daniels seeks to enforce here. The fact that VIP chose to convey this humorous message through a dog toy is irrelevant.<\/span><\/p>\n

Because Bad Spaniels is an expressive work, the district court erred in finding trademark infringement without first requiring JDPI to satisfy at least one of the two Rogers prongs. The appeal therefore vacated the district court\u2019s finding of infringement and remanded for a determination by that court in the first instance of whether JDPI can satisfy a prong of the Rogers test.<\/span><\/p>\n

Trademark Dilution by Tarnishment<\/strong><\/span><\/h5>\n

When the use of a mark is \u201cnoncommercial,\u201d there can be no dilution by tarnishment. Speech is noncommercial \u201cif it does more than propose a commercial transaction\u201d and contains some \u201cprotected expression,\u201d Thus, use of a mark may be \u201cnoncommercial\u201d even if used to \u201csell\u201d a product.<\/span><\/p>\n

Although VIP used JDPI\u2019s trade dress and bottle design to sell Bad Spaniels, they were also used to convey a humorous message. That message is protected by the First Amendment. VIP therefore was entitled to judgment in its favor on the federal and state law dilution claims.<\/span><\/p>\n","protected":false},"excerpt":{"rendered":"

Bad Spaniels dog toy is an expressive work entitled to First Amendment protection, the appeal has reversed the district court\u2019s judgment. Protection for trademark parody<\/p>\n

Continue readingFirst amendment protection for trademark parody<\/span><\/a><\/div>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[15,31,6,39,17],"tags":[],"class_list":["post-3357","post","type-post","status-publish","format-standard","hentry","category-trademark","category-exceptions-and-limitations","category-intellectual-property","category-interpretation","category-litigation","entry"],"_links":{"self":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts\/3357","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/comments?post=3357"}],"version-history":[{"count":3,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts\/3357\/revisions"}],"predecessor-version":[{"id":3361,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts\/3357\/revisions\/3361"}],"wp:attachment":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/media?parent=3357"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/categories?post=3357"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/tags?post=3357"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}