The 9th Circuit rules parody trumps Jack Daniel’s claims of trademark dilution and allows “Bad Spaniels” dog toy. Just because a product is commercial doesn’t mean it isn’t protected by the 1st Amendment against trademark-related claims.

This case follows a long line of parody grounded first amendment awesomeness with the freedom trumping companies and regulators that don’t get the joke

A dog toy company had lost at the trial court level where the district court had found against its “Bad Spaniels Silly Squeaker” toy for canines in favor of Tennessee Whiskey producer Jack Daniel’s and enjoined the toy maker from manufacturing its dog toy that looked like a bottle of Jack Daniel’s old No. 7 with humorous content written on the label. What humorous content you ask? Well, here are the two toys side-by-side:

Jack Daniels and Bad Spaniels labels from complaint

The Silly Squeaker Bad Spaniels toy is part of a line of humorous recreations of famous spirits, wine and beer bottles (seriously, there are parodies of everything from Kahlua, Pabst, Aperol and Guinness to Jameson, Tito’s and Moet). The tag line on the Bad Spaniels toy is “the Old No. 2 on your Tennessee Carpet.” And the companies parodies only get better (depending on your view of scatological puns) from there with a Pacifico parody as “Pawschitngo” and a Guinness/Pissness label you don’t want to miss (sorry guys, currently out-of-stock).

At the district court level, the toy maker had sought to cancel the registration Jack Daniel’s had for the bottle shape and style pointing out that it looks like Evan Williams and other whiskies. The district court had also rejected a nominative fair use defense that the toy maker had asserted because the toy maker wasn’t using a good reproduction/similar bottle, there were enough differences that fair use was not in play. The Ninth Circuit agreed with those points. What the district court had ruled that the Ninth Circuit disagreed with was the application of the First Amendment to the case. VIP (the toy maker) had asserted that the toy was an expressive work entitled to First Amendment protection. The district court felt otherwise, finding that the toy maker had used Jack Daniel’s protected trade dress and trademarks in a somewhat non-expressive, commercial product and was not “parody” holding that the toy company clearly wanted to trade on Jack Daniel’s fame for profit.

The Ninth Circuit reversed this holding finding that the dog toy was expressive and worthy of protection under the First Amendment. The Ninth Circuit rejected the theory that just because the toy was a commercial product that that meant it wasn’t non-expressive. The Ninth Circuit pointed out that the toy used creative and humorous phraseology to comment on the Jack Daniel’s bottle and the elements that Jack Daniel’s wanted to protect: 

Like the greeting cards in Gordon, the Bad Spaniels dog toy, although surely not the equivalent of the Mona Lisa, is an expressive work. See Empire Distribution, 875 F.3d at 1196 (“We decide this legal question de novo.”). The toy communicates a “humorous message,” see Gordon, 909 at 268–69, 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.” The effect is “a simple” message conveyed by “juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner.” L.L. Bean, Inc., 811 F.2d at 34 (affording First Amendment protection to a message “that business and product images need not always be taken too seriously”). Unlike the book in Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997), which made “no effort to create a transformative work with ‘new expression, meaning, or message,’” Bad Spaniels comments humorously on precisely those elements that Jack Daniels seeks to enforce here. Id. at 1401 (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578, 580 (1994)). The fact that VIP chose to convey this humorous message through a dog toy is irrelevant. See Hurley v. Irish-Am. Gay, Lesbian & Bisexual Grp. of Bos., 515 U.S. 557, 569 (1995) (“[T]he Constitution looks beyond written or spoken words as mediums of expression.”).

The Ninth Circuit compared the case to the Chewy Vuiton case where a dog toy parodying Louis Vuitton’s famous bags was protected by the First Amendment and not in violation of trademark dilution laws and the Lanham Act just because it was a commercial product. 

The The Ninth Circuit also rejected the notion that the toy diluted JD’s mark:

When the use of a mark is “noncommercial,” there can be no dilution by tarnishment. 15 U.S.C. § 1125(c)(3)(C); see A.R.S. § 44-1448.01(C)(2). Speech is noncommercial “if it does more than propose a commercial transaction,” Nissan Motor Co. v. Nissan Comput. Corp., 378 F.3d 1002, 1017 (9th Cir. 2004) (quoting MCA Records, 296 F.3d at 906), and contains some “protected expression,” MCA Records, 296 F.3d at 906. Thus, use of a mark may be “noncommercial” even if used to “sell” a product. See Nissan Motor Co., 378 F.3d at 1017; MCA Records, 296 F.3d at 906.

Although VIP used JDPI’s trade dress and bottle design to sell Bad Spaniels, they were also used to convey a humorous message. That message, as set forth in Part II.C above, is protected by the First Amendment. VIP therefore was entitled to judgment in its favor on the federal and state law dilution claims. See Nissan Motor Co., 378 F.3d at 1017; MCA Records, 296 F.3d at 906.

You can read the full opinion here. The bottom line is that once again, as we’ve discussed in the various entries linked above, the First Amendment provides a robust protection for parody and beverage manufacturers that aren’t shy about legal fees may well be rewarded for sticking up for their funny or even controversial or ideas grounded in poor judgment and popularly considered “bad taste.”

Ashley Brandt

Hi there! I’m happy you’re here. My name is Ashley Brandt and I’m an attorney in Chicago representing clients in the Food and Beverage, Advertising, Media, and Real Estate industries. A while back I kept getting calls and questions from industry professionals and attorneys looking for advice and information on a fun and unique area of law that I’m lucky enough to practice in. These calls represented a serious lack of, and need for, some answers, news, and information on the legal aspects of marketing and media. I've got this deep seeded belief that information should be readily available and that the greatest benefit from the information age is open access to knowledge... so ... this blog seemed like the best way to accomplish that. I enjoy being an attorney and it’s given me some amazing opportunities, wonderful experiences, and an appreciation and love for this work. I live in Chicago and work at an exceptional law firm, Goldstein & McClintock, with some truly brilliant people. Feel free to contact me at any time with any issues, comments, concerns… frankly, after reading this far, I hope you take the time to at least let me know what you think about the blog and how I can make it a better resource.

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