Today's post is about the fourth of five US trademark cases that I will be discussing as part of a Case Law wrap-up for 2024. Stay tuned for the final case next week.
In Jack Daniels Properties Incorporated v. VIP Products, LLC, the courts discussed whether the Rogers test applied, and whether the activities of VIP Prodcuts, LLC (VIP) were protected under Fair Use.
VIP marketed and sold a dog toy shaped like a Jack Daniels (JD) bottle with 'Bad Spaniels' in place of 'Jack Daniels;' "Old No.2 on your Tennessee carpet' in place of 'Old No.7 brand Tennessee sour mash whiskey,' among other elements.
In 2014, JD sent VIP a C&D letter when the toys hit the market. VIP responded by seeking a Declaratory Judgment in the District Court of Arizona. VIP claimed non-infringement and sought cancellation of JD's mark claiming the bottle was not distinctive. JD countersued for infringement and dilution. VIP claimed fair use (defense of infringement) and that the Rogers test applied.
The Rogers test is from the 2nd Circuit (Rogers v. Grimaldi 1989). There, the test provides for dismissal of infringement claims at the outset of a case unless:
1) use of the mark has no artistic relevance to the underlying mark, or
2) the use explicitly misleads as to the source of the content of the work.
The District Court of Arizona found that the Rogers test did not apply. They found there was no Fair Use because parody falls within the exclusion (non-infringement) only when they do not use a famous mark to identify the source of the alleged diluter's product. They also found that consumers were likely to be confused and that the negative associations with dog excrement, e.g., the Old No.2, would harm Jack Daniel's reputation.
The case was appealed to the 9th circuit in 2020. There, the court reversed the infringement claim stating that the Rogers test does apply. They remanded the case back to the District Court to decide whether JD could satisfy either prong of the Rogers test. They also awarded judgment on the dilution claim to VIP holding that because Bad Spaniels' parodies JD it falls under the “non-commercial use exclusion.” The 9th Circuit cited similarities to the Louis Vuitton/Chewy Vuitton case, but that case was pre-Rogers test and was actually decided on a likelihood of confusion. In other words, no one would be confused by a chew toy and think it came from LV. The court further said that VIP's use cannot be dilution by tarnishment because VIP's use is expressive and expressive is non-commercial.
The District Court on remand found that JD could not satisfy either prong of the Rogers test and granted summary judgment to VIP on non-infringement. The 9th Circuit affirmed.
In 2022, the Supreme Court took up the case. There, the Court found that Rogers does NOT apply when using another's trademark as a mark. It also found that parody does not cover a case when the unauthorized user is using the mark as a source identifier. The case was Vacated and Remanded back to the District Court.
In 2024, on its second remand, the District Court was asked by VIP (for the first time) to abolish dilution by tarnishment as unconstitutional under the First Amendment. VIP claims it constitutes unconstitutional viewpoint-based discrimination. JD only wants an injunction. As of this writing, an oral hearing is set for Dec 2024. We will keep our eyes on this one.
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