Revived Jack Daniel’s Dog Toy Case Sent Back to District Court

Jul 07, 2023

Jack Daniel’s Properties Inc. convinced the Ninth Circuit to send its trademark case over a “Bad Spaniels” dog toy back to district court after the Supreme Court reversed the appeals court’s rejection of the whiskey maker’s claims.

VIP Products LLC argued that the district court already ruled it had infringed Jack Daniel’s trade dress and that the US Court of Appeals for the Ninth Circuit had a full record before it. But the Ninth Circuit, which in June had its free speech-based finding for VIP overturned, instead chose to simply vacate the trial court’s ruling and send the case back to the US District Court for the District of Arizona.

The one-paragraph order could prolong litigation by having the district court again analyze the case based on trademark law’s standard likelihood of consumer confusion framework. The court already performed such an analysis as it awarded Jack Daniel’s Properties Inc. an initial victory in 2018 and found VIP infringed as well as diluted its trademarks.

Reversing that ruling in 2020, Ninth Circuit held the test from Rogers v. Grimaldi—which allows artistically relevant trademark use in expressive works without the owner’s permission—negated the need for a confusion analysis.

But the Supreme Court said Rogers couldn’t apply if the mark in question was being used as a trademark, kicking the case back to the Ninth Circuit. The justices also vacated the finding that VIP’s use fell under the noncommercial exception in dilution law for similar reasons.

After the Supreme Court’s decision, VIP told the Ninth Circuit that it “can and should itself decide” infringement and dilution because questions turned on questions of law or mixed questions of law and undisputed facts from a complete record. The case, it said, had “returned to its original posture” with VIP as the appellant challenging the district court’s original judgment, now just with its Rogers defense taken away.

But Jack Daniel’s noted that the current Ninth Circuit docket is Jack Daniel’s appeal of the district court’s judgment for VIP on remand—after the appeals court nixed Jack Daniel’s win. It said if VIP convinced the Ninth Circuit to agree with non-Rogers aspects of its original appeal, that would simply vacate the original Jack Daniel’s victory that doesn’t exist, not affirm VIP’s Rogers-based win.

If the court wouldn’t send back the case to district court, it should at least reverse the briefing order to put VIP in the role of the appellant. VIP also argued it should provide the opening brief if the Ninth Circuit kept the case as it requested.

Jack Daniel’s sued in 2014, alleging that a dog toy shaped like a bottle of Jack Daniel’s infringed its trade dress. The toy also mimicked fonts on Jack Daniel’s distinctive black labels, but replaced “Jack Daniel’s” with “Bad Spaniels,” “Old No. 7” with “Old No. 2,” and “Tennessee Sour Mash” with “On Your Tennessee Carpet.”

Circuit Judges Andrew D. Hurwitz, Judges A. Wallace Tashima and Eric D. Miller jointly issued the order.

Dickinson Wright PLLC represents VIP. Williams & Connolly LLP and Messner Reeves LLP represent Jack Daniel’s.

The case is VIP Products LLC v. Jack Daniel’s Properties Inc., 9th Cir., No. 21-16969, remanded 8/14/23.

To contact the reporter on this story: Kyle Jahner in Washington at [email protected]

To contact the editor responsible for this story: Adam M. Taylor at [email protected]

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