The International Trademark Association (INTA) has filed an amicus brief in the United States Court of Appeals for the Ninth Circuit in VIP Products, LLC v. Jack Daniel’s Properties, Inc., No. 21-16969, marking the Association’s third amicus brief in this long-running dispute. The case involves the balancing of interests between the First Amendment and trademark law arising in the context of a consumer product, namely a dog toy resembling a bottle of Jack Daniel’s Old No. 7 Black Label Tennessee Whiskey.  

In this case, the Ninth Circuit held that the Jack Daniel’s marks were used on the dog toy in a humorous way and was therefore entitled to First Amendment protection. In doing so, the Ninth Circuit applied Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) to a consumer product, under which the district court was required to conclude that the dog toy did not infringe Jack Daniel’s trademarks. The Ninth Circuit also referenced the humor of the dog toy to conclude that the trademark use was non-commercial and thus could not constitute trademark dilution. 

The Ninth Circuit’s decision is significant as it departs from the law in all other Circuits. Traditionally, the Rogers analysis has been reserved for expressive works rather than consumer products. No other circuit has extended Rogers beyond artistic works.  

Rogers was formulated in the context of a movie title—namely Ginger and Fred—and the kind of work that is inherently expressive and from which expression cannot be removed without the work ceasing to exist. When applied to such artistic expressions, Rogers appropriately balances the rights of trademark owners with the free speech rights of authors. Applying Rogers in the context of an ordinary consumer product that can exist independent of the expression placed on it risks eroding important protections for brand and trademark owners.  

INTA’s brief urges the Ninth Circuit to reconsider the application of Rogers v. Grimaldi to the use of trademarks on any commercial product having some “expressive” quality and to realign with other circuit courts. Under the traditional analysis, consumer products that contain expression separable from the products themselves should be analyzed under traditional trademark likelihood of confusion principles and defenses. INTA also argued that review is appropriate to clarify the noncommercial use exception to trademark dilution under the Lanham Act.  



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