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Case 2:14-cv-02057-SMM Document 171 Filed 09/27/16 Page 1 of 35
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`WO
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF ARIZONA
`
`No. CV-14-2057-PHX-SMM
`
`MEMORANDUM OF DECISION
`AND ORDER
`
`))))))))))))))
`
`VIP Products, LLC,
`Plaintiff,
`
`vs.
`Jack Daniel’s Properties, Inc.,
`Defendant.
`
`And Related Counterclaim.
`_________________________________
`
`Pending before the Court is Plaintiff VIP Products, LLC’s (“VIP”) motion for
`summary judgment. (Doc. 110.) VIP contends that it is entitled to judgment as a matter of
`law on its Amended Complaint that contains three claims for declaratory relief. (Id.) VIP
`further contends that it is entitled to judgment as a matter of law on all of the claims that
`Defendant Jack Daniel’s Properties Inc.’s (“JDPI”) brought as Counterclaims in its Answer.
`(Id.) The matter is fully briefed.
`Also pending is JDPI’s motion for partial summary judgment. (Doc. 101.) At issue,
`JDPI moves for partial summary judgment regarding VIP’s second and third claims. (Id.) The
`matter is fully briefed.
`Finally, there are pending motions associated with the parties’ cross-motions for
`summary judgment, which are also fully briefed.
`The Court will deny VIP’s motion for summary judgment, grant JDPI’s motion for
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`Case 2:14-cv-02057-SMM Document 171 Filed 09/27/16 Page 2 of 35
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`partial summary judgment, and resolve all of the pending motions associated with the parties’
`cross-motions for summary judgment.1 The Court will set a status hearing for the parties in
`order to discuss the remaining matters that must be adjudicated at trial.
`FACTUAL BACKGROUND
`The Court will summarize the basic factual background here. In its discussion of the
`particular claims, the Court will discuss certain relevant and material facts that arise in
`conjunction with those particular legal claims at issue.
`VIP designs, manufactures, markets, and sells chew toys for dogs. VIP sells various
`brands of dog chew toys, including the “Tuffy’s” line (durable sewn/soft toys), the “Mighty”
`line (durable toys made of a different material than the Tuffy’s line), and the “Silly
`Squeakers” line (durable rubber squeaky novelty toys). (Doc. 110 at 2.) In July of 2013, VIP
`introduced its latest novelty dog toy, the “Bad Spaniels” durable rubber squeaky novelty dog
`toy. (Doc. 158.) The Bad Spaniels toy is in the shape of a liquor bottle and features a
`wide-eyed spaniel over the words “Bad Spaniels, the Old No. 2, on your Tennessee Carpet.”
`(Id.) The design for the Bad Spaniels toy has many similarities to the bottle design for Jack
`Daniel’s Tennessee Sour Mash Whiskey (“Old No. 7 Brand”). (Doc. 157.) These similarities
`include the shape of the product, the use of white lettering over a black background, and font
`styles. Nevertheless, on the back of the Silly Squeakers packaging for the Bad Spaniels toy,
`it states: “This product is not affiliated with Jack Daniel’s.” (Doc. 158.)
`JDPI promptly demanded that VIP stop selling the new toy. (Doc. 47.) VIP responded
`by filing this suit seeking a declaratory judgment. (Doc. 49.) In Claim 1, VIP alleged that its
`use of the Bad Spaniels’ name and trademark does not infringe or dilute any claimed
`trademark rights that JDPI may claim in its Jack Daniel’s trademark for its Tennessee sour
`mash whiskey and/or any other product. (Id. at 9.) In Claim 2, VIP alleged that neither the
`
`1Both parties have requested oral argument. Based on the parties’ extensive legal
`memoranda and submitted supporting evidence, the Court will not set oral argument on the
`parties’ cross-motions as it would not aid the Court’s decisional process. See e.g., Partridge
`v. Reich, 141 F.3d 920, 926 (9th Cir. 1998).
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`Jack Daniel’s trade dress nor the Jack Daniel’s bottle design are entitled to trademark
`protection because they are functional; they contain merely ornamental and decorative
`features; they are generic; and they are non-distinctive. (Id. at 9-10.) In Claim 3, VIP alleges
`that Jack Daniel’s bottle design is not entitled to Patent and Trademark Office (“PTO”)
`registration because it is functional, generic, and non-distinctive. (Id. at 10-11.) The PTO
`registration states that JDPI’s trademark consists of a three-dimensional configuration of the
`square shaped bottle container for the goods having an embossed signature design comprised
`of the words, “Jack Daniel.” (Doc. 49 at 5.) VIP contends that JDPI’s trademark registration
`should be cancelled. (Id. at 10-11.)
`In response, JDPI answered VIP’s complaint and filed nine separate counterclaims:
`(1) Infringement of JDPI’s federally-registered trademarks and trade dress under the Lanham
`Act, 15 U.S.C. § 1114, 1116-18; (2) Trade dress infringement in violation of federal law, 15
`U.S.C. § 1114, 1116-18 and 1125; (3) Dilution by tarnishment of the JDPI trademarks under
`15 U.S.C. § 1125(c); (4) Dilution by tarnishment of the Jack Daniel’s trade dress under 15
`U.S.C. § 1125(c); (5) Trademark infringement in violation of Arizona law, A.R.S. §§ 44-
`1451 et seq.; (6) Infringement of the JDPI trademarks and unfair competition at common law;
`(7) Infringement of the Jack Daniel’s trade dress at common law; (8) Dilution of the JDPI
`trademarks under A.R.S. § 44-1448.01; and (9) Dilution of the Jack Daniel’s trade dress
`under A.R.S. § 44-1448.01. (Doc. 12.)
`JDPI alleged in its Answer that it owns a trade dress consisting of a combination of
`square bottle with a ribbed neck, a black cap, a black neck wrap closure with white printing
`bearing the OLD NO. 7 mark, and a black front label with white printing and a filigreed
`border bearing the JACK DANIEL’S trademark depicted in arched lettering at the top of the
`label, the OLD NO. 7 trademark contained within a filigreed oval design in the middle
`portion of the label beneath the JACK DANIEL’S trademark, and the words “Tennessee Sour
`Mash Whiskey” in the lower portion of the label with the word “Tennessee” depicted in
`script. (Doc. 12 at 5 ¶ 6; see also Doc. 101 at 9.)
`VIP has moved for summary judgment contending that JDPI’s infringement and
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`Case 2:14-cv-02057-SMM Document 171 Filed 09/27/16 Page 4 of 35
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`dilution claims be denied because the defenses of nominative and First Amendment fair use
`shield it from liability. (Doc. 110.) VIP further argues that even if those defenses do not
`apply, VIP is still entitled to summary judgment on all claims because JDPI cannot prove its
`dilution claims under the Trademark Dilution Revision Act (“TDRA”); as to JDPI’s
`infringement claims, that Jack Daniel’s Tennessee Whiskey (“JDTW”) trademarks and bottle
`dress are functional and non-distinctive. (Id. at 3, 15-28.)
`JDPI moves for partial summary judgment on VIP’s Amended Complaint. (Doc. 101.)
`As to Claim 1, JDPI leaves for trial the issue of whether VIP’s alleged parody infringes or
`dilutes the Jack Daniel’s trademarks and trade dress. (Id. at 7.) As to Claims 2 and 3, JDPI
`acknowledges that it bears the burden of proof regarding the protectability of its Jack
`Daniel’s trade dress. (Id.) JDPI disputes that the Jack Daniel’s trade dress and the trademark
`shown in United States Trademark Registration No. 4,106,178 (See Doc. 12 at 7) are
`functional, contain merely ornamental and decorative features that do not function as
`trademarks, are generic, and are non-distinctive. (Doc. 101 at 6.)
`STANDARD OF REVIEW
`
`Summary Judgment
`“A party may move for summary judgment, identifying each claim or defense–or the
`part of each claim or defense–on which summary judgment is sought.” Fed. R. Civ. P. 56(a)
`A court must grant summary judgment if the pleadings and supporting documents, viewed
`in the light most favorable to the nonmoving party, show “that there is no genuine issue as
`to any material fact and the movant is entitled to judgment as a matter of law.” Id.; see
`Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986); Jesinger v. Nevada Fed. Credit Union,
`24 F.3d 1127, 1130 (9th Cir. 1994). Substantive law determines which facts are material.
`See Anderson v. Liberty Lobby, 477 U.S. 242, 248 (1986); see also Jesinger, 24 F.3d at
`1130. “Only disputes over facts that might affect the outcome of the suit under the governing
`law will properly preclude the entry of summary judgment.” Anderson, 477 U.S. at 248. The
`dispute must also be genuine, that is, the evidence must be “such that a reasonable jury could
`return a verdict for the nonmoving party.” Id.; see Jesinger, 24 F.3d at 1130.
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`A principal purpose of summary judgment is “to isolate and dispose of factually
`unsupported claims.” Celotex, 477 U.S. at 323-24. Summary judgment is appropriate against
`a party who “fails to make a showing sufficient to establish the existence of an element
`essential to that party’s case, and on which that party will bear the burden of proof at trial.”
`Id. at 322; see also Citadel Holding Corp. v. Roven, 26 F.3d 960, 964 (9th Cir. 1994). The
`moving party need not disprove matters on which the opponent has the burden of proof at
`trial. See Celotex, 477 U.S. at 323. The party opposing summary judgment may not rest upon
`the mere allegations or denials of the party’s pleadings, but must set forth “specific facts
`showing that there is a genuine issue for trial.” See Matsushita Elec. Indus. Co. v. Zenith
`Radio, 475 U.S. 574, 586-87 (1986) (quoting Fed. R. Civ. P. 56(e) (1963) (amended 2010));
`Brinson v. Linda Rose Joint Venture, 53 F.3d 1044, 1049 (9th Cir. 1995). The non-movant’s
`bare assertions, standing alone, are insufficient to create a material issue of fact and defeat
`a motion for summary judgment. Anderson, 477 U.S. at 247–48.
`General Trademark Principles
`“A trademark is a limited property right in a particular word, phrase or symbol.” New
`Kids on the Block v. News Am. Publ’n, Inc., 971 F.2d 302, 306 (9th Cir. 1992). “Throughout
`the development of trademark law, the purpose of trademarks remained constant and limited:
`Identification of the manufacturer or sponsor of a good or the provider of a service.[] And
`the wrong protected against was traditionally equally limited: Preventing producers from
`free-riding on their rivals’ marks.” Id. at 305. “[T]he holder of a trademark will be denied
`protection if it is (or becomes) generic, i.e., if it does not relate exclusively to the trademark
`owner’s product.” Id. at 306.
`To state an infringement claim, whether it be a trademark claim or a trade dress claim,
`a plaintiff must meet three basic elements: (1) distinctiveness, (2) nonfunctionality, and (3)
`likelihood of confusion. Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d
`1042, 1047 (9th Cir. 1998).
`General Trade Dress Principles
`“Trade dress refers generally to the total image, design, and overall appearance of
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`a product.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 765 n.1 (1992). It may
`include the packaging, the “dress” of a product or the design of a bottle. See Fiji Water Co.
`v. Fiji Mineral Water U.S., LLC, 741 F. Supp. 2d 1165, 1172-74 (C.D. Cal. 2010). A
`product’s trade dress or packaging is protectable under trademark law so long as the trade
`dress is nonfunctional and distinctive. See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S.
`205, 210 (2000); Kendall-Jackson, 150 F.3d at 1047. “[T]he proper inquiry is not whether
`individual features of a product are functional or nondistinctive but whether the whole
`collection of features taken together are functional or nondistinctive.” Kendall-Jackson, 150
`F.3d at 1050.
`The trade dress of a product is “distinctive and capable of being protected if it either
`(1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning.”
`Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992). Broadly speaking, trade
`dress is inherently distinctive if it is so “unique, unusual, or unexpected in this market that
`one can assume without proof that it will automatically be perceived by consumers as an
`indicator of origin[.]” Fiji Water, 741 F. Supp. 2d at 1176 (citing Seabrook Foods, Inc. v.
`Bar-Well Foods Ltd., 568 F.2d 1342, 1344 (C.C.P.A. 1977)). Trade dress may also acquire
`distinctiveness through secondary meaning, that is, when the trade dress “‘has come through
`use to be uniquely associated with a specific source.’” Two Pesos, 505 U.S. at 766 n.4
`(quoting Restatement (Third) of Unfair Competition § 13 (1995)).
`The trade dress of a product is functional if the trade dress is essential to the use or
`purpose of the product or affects the cost or quality of the product. See Disc Golf Ass’n v.
`Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir. 1998). The Ninth Circuit utilizes four
`factors to consider whether a product feature is functional: (1) whether the design yields a
`utilitarian advantage; (2) whether alternative designs are available; (3) whether advertising
`touts the utilitarian advantages of the design; and (4) whether the particular design results
`from a comparatively simple or inexpensive method of manufacture. See Disc Golf, 158 F.3d
`at 1006. No one factor is dispositive; all are to be weighed collectively. See International
`Jensen, Inc. v. Metrosound U.S., Inc., 4 F.3d 819, 823 (9th Cir. 1993).
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`Alternatively, under the aesthetic functionality test, trade dress may be functional if
`“protection of the [trade dress] as a trademark would impose a significant non-reputation
`related competitive disadvantage.” Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457
`F.3d 1062, 1072 (9th Cir. 2006) (citing TrafFix Devices, Inc. v. Marketing Displays, Inc.,
`532 U.S. 23, 32-33 (2001)). This means that trade dress is aesthetically functional when it
`“serve[s] an aesthetic purpose wholly independent of any source-identifying function, or in
`other words, where the consumer is driven to purchase the product based on how it looks.”
`Fiji Water, 741 F. Supp. 2d at 1173 (further quotation and citation omitted).
`DISCUSSION
`The Court will first discuss VIP’s motion for summary judgment. (Doc. 110.)
`I. VIP’s Defenses
`VIP first contends that all of JDPI’s counterclaims for infringement and dilution must
`be denied because VIP’s defenses of nominative fair use and First Amendment fair use shield
`it from liability. (Doc. 110 at 3.)
`Nominative Fair Use
`Trademark law recognizes a defense where a registered trademark is used only “to
`describe the goods or services of a party, or their geographic origin. See New Kids, 971 F.2d
`at 306. “The ‘fair use’ defense, in essence, forbids a trademark registrant to appropriate a
`descriptive term for his exclusive use and so prevent others from accurately describing a
`characteristic of their goods.” Id. (further citation omitted).
` To establish nominative fair use, first, “the product or service in question must be one
`not readily identifiable without use of the trademark; second, only so much of the mark or
`marks may be used as is reasonably necessary to identify the product or service;[] and third,
`the user must do nothing that would, in conjunction with the mark, suggest sponsorship or
`endorsement by the trademark holder.” Id. at 308.
`VIP argues that its product constitutes nominative fair use of the JDTW Marks and
`Bottle Dress because: (1) the JDTW Marks and Bottle Dress are not readily identifiable
`without using several of their elements. Given the medium of the parody, a three-dimensional
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`Case 2:14-cv-02057-SMM Document 171 Filed 09/27/16 Page 8 of 35
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`dog toy, VIP argues that it had to utilize several key components of the JDTW Marks and
`Bottle Dress; (2) VIP used only so much of the JDTW Marks and Bottle Dress that were
`reasonably necessary to identify the bottle. VIP otherwise states that it did not specifically
`use any of JDPI’s registered marks; and (3) VIP did nothing to suggest that JDPI had
`sponsored or endorsed the VIP Product. (See Doc. 110 at 4.)
`JDPI contends that the nominative fair use defense does not apply because this
`defense only applies where a defendant uses the plaintiff’s identical mark or trade dress.
`(Doc. 142 at 10-11.) Here, VIP did not identically use JDPI’s trademarks or trade dress. (Id.)
`According to JDPI, the nominative fair use doctrine applies only “where a defendant has used
`the plaintiff’s mark to describe the plaintiff’s product, even if the defendant’s ultimate goal
`is to describe his own product,” citing Cairns v. Franklin Mint Co., 292 F.3d 1139, 1151 (9th
`Cir. 2002) (finding that it was necessary for the defendant to use the name and likeness of
`Princess Diana to refer to its “Diana-related” merchandise). (Doc. 142 at 10-11.)
`The Court does not find that VIP is entitled to be shielded from liability based on its
`nominative fair use defense. VIP’s Bad Spaniels toy closely imitates the Jack Daniel’s Trade
`Dress and marks, but it did not use any of JDPI’s registered marks, including the Jack
`Daniel’s name; the number 7; the embossed Jack Daniel’s’ signature on the bottle; the same
`filigree design on the label; the three-sided body label, or the identical combination of
`elements constituting the trade dress. Under the New Kids test, when a defendant uses a
`trademark nominally, the trademark will be identical to the plaintiff’s mark, at least in terms
`of the words in question. 971 F.2d at 308. As further stated in Playboy Enter., Inc. v. Welles,
`279 F.3d 796, 801 (9th Cir. 2001), it is the defendant’s very use of the plaintiff’s identical
`trademark that makes the nominative fair use analysis necessary rather than application of
`AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) which utilizes eight factors to
`focus on the similarity of the trademarks used by the plaintiff and the defendant in order to
`determine liability for likelihood of confusion in the marketplace. Because it is undisputed
`that VIP did not use JDPI’s identical marks or trade dress in its Bad Spaniels toy, the
`nominative fair use doctrine does not apply as matter of law.
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`First Amendment Fair Use
`Next, VIP argues that JDPI’s infringement and dilution claims must fail because VIP’s
`Bad Spaniels’ parody use of the JDTW Marks and Bottle Dress is protected speech under the
`First Amendment. (Doc. 110 at 6.) VIP states that its dog toy parody qualifies as an
`expressive work under the First Amendment. (Id.) VIP argues that in order to qualify as
`“expressive use,” first a defendant must have used the mark “beyond its source-identifying
`function” (Id. at 6 (citing Mattel Inc. v. MCA Records, Inc., 296 F.3d 894, 900 (9th Cir.
`2002)), and second, its parody form of expression must not be part of a commercial
`transaction. (Id. at 6-7, (citing Nissan Motor Co. v. Nissan Comput. Corp., 378 F.3d 1002,
`1017 (9th Cir. 2004)).)
`JDPI contends that VIP’s dog toy is not entitled to protection under the First
`Amendment. (Doc. 142 at 13.) In MCA Records, 296 F.3d at 902, JDPI states that the Ninth
`Circuit adopted the Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), standard for
`determining the balancing of interests between trademark law and the First Amendment.
`According to JDPI, the Rogers standard applies to artistic or expressive works and requires
`courts to construe trademark law only where the public interest in avoiding consumer
`confusion outweighs the public interest in free expression. Rogers, 875 F.2d at 999. Because
`the VIP dog toy is not an artistic or expressive work, JDPI contends that the Rogers
`balancing test is not applicable. (Doc. 142 at 14-15.) Rather, JDPI contends that the VIP dog
`toy falls into those cases construing parody products–cases which have uniformly applied the
`standard trademark likelihood of confusion analysis. (Id.)
`The Court finds that VIP’s dog toy is not entitled to protection under the First
`Amendment because it is not an expressive work. See Brown v. Elec. Arts, Inc., 724 F.3d
`1235 (9th Cir. 2013) (stating that the Rogers test is reserved for expressive works). In
`Rogers, the court dealt with the intersection of trademark law and the title of a motion
`picture. 875 F.2d at 997. The Rogers court went on to find that movies, plays, books, and
`songs are works of “artistic expression” and thus subject to the balancing between trademark
`law and the protections of the First Amendment. Id.; see also E.S.S. Entm’t 2000 Inc. v. Rock
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`Star Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. 2008) (stating that the Rogers balancing test
`only applies to artistic works). Although Rogers dealt with a motion picture; the Ninth
`Circuit has also applied the Rogers balancing test to a song (MCA Records), photographs
`(Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003), and video games
`(E.S.S. and Brown).
`In this case, the Court finds that the standard trademark likelihood of confusion
`analysis, not Rogers, is appropriate. See Sleekcraft Boats, 599 F.2d at 348-49 (establishing
`the eight factors applicable to likelihood of confusion analysis). Under likelihood of
`confusion principles, confusion exists where there is a likelihood that an appreciable number
`of ordinary prudent purchasers will be misled or confused as to the source of goods, or where
`consumers are likely to believe that the trademark’s owner sponsored, endorsed, or otherwise
`approved of the defendant’s use of the trademark. Id. Based on the facts here, the First
`Amendment affords no protection to VIP because it is trademark law that regulates
`misleading commercial speech where another’s trademark is used for source identification
`in a way likely to cause consumer confusion. See Tommy Hilfiger Licensing, Inc. v. Nature
`Labs, LLC, 221 F. Supp. 2d 410, 415 (S.D.N.Y. 2002) (refusing First Amendment protection
`to “Timmy Holedigger” an alleged parody “dog perfume” in favor of the owner of the
`Tommy Hilfiger trademarks for clothing). Here, as was similarly the case in Tommy Hilfiger,
`VIP is using an adaptation of the Jack Daniel’s trademark and trade dress for the dual
`purpose of making an alleged expressive comment as well as the commercial selling of a
`non-competing product. See Tommy Hilfiger, 221 F. Supp. 2d at 415. The Court agrees with
`the analysis in Tommy Hilfiger that because the adaptation of the Jack Daniel’s trademark
`and trade dress mark are being used, at least in part, to promote a somewhat non-expressive,
`commercial product, the First Amendment does not extend to such use. See id. at 415-16.
`In conclusion, the Bad Spaniels dog toy is not an expressive work for purposes of the
`application of the Rogers test because VIP makes trademark use of its adaptations of JDPI’s
`trademarks and the Jack Daniel’s trade dress to sell a commercial product, its novelty dog
`toy. The novelty dog toy is not an expressive work like those to which the Rogers test has
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`been applied in the Ninth Circuit. In this case, where the adaptation of the Jack Daniel’s
`trademark and trade dress were engaged for the dual purpose of making an alleged expressive
`comment as well as the commercial selling of a non-competing product, the First
`Amendment does not establish protection.
`II. VIP’s Motion for Summary Judgment Re:
`JDPI’s Counterclaims for Trade Dress Infringement
`In JDPI’s Answer to VIP’s Complaint for Declaratory Judgment, JDPI asserted nine
`counterclaims against VIP. (Doc. 12.) In five of those claims, JDPI asserted either trademark
`or trade dress infringement. (Id.) In the other four claims, JDPI asserted trademark and trade
`dress dilution. (Id.) In VIP’s motion for summary judgment, it alleged entitlement to
`summary judgment on each of JDPI’s counterclaims. (Doc. 110.) As a threshold matter, VIP
`contended that it is entitled to summary judgment on all of JDPI’s counterclaims because the
`nominative fair use defense and the First Amendment fair use defense shield it from liability.
`(Id. at 3.)
`The Court has found that neither nominative fair use nor First Amendment fair use
`provides a defense for VIP. Consequently, the Court turns to the merits of VIP’s arguments
`that it is entitled to summary judgment.
`Infringement Claims
`To state an infringement claim, whether it be a trademark claim or a trade dress claim,
`a plaintiff must meet three basic elements: (1) distinctiveness, (2) nonfunctionality, and (3)
`likelihood of confusion. See Kendall-Jackson, 150 F.3d at 1047. VIP alleges that the bottle
`dress of the Jack Daniel’s Tennessee whiskey bottle and the “Jack Daniel” embossed
`signature bottle design lacks distinctiveness and is functional. (Doc. 110 at 15-28.)
`Lack of Distinctiveness
`Generic
`VIP first argues that JDPI has not proven that the JDTW bottle dress is a source
`identifier for Jack Daniel’s whiskey. Rather, VIP argues that the JDTW bottle dress is only
`a generic identifier of Kentucky Bourbon/Tennessee Whiskey, not Jack Daniel’s whiskey in
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`Case 2:14-cv-02057-SMM Document 171 Filed 09/27/16 Page 12 of 35
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`particular. (Doc. 110 at 18.) In order for JDPI to prove that its JDTW bottle dress is not
`generic, VIP argues that JDPI must show more than a subordinate meaning that applies to
`its trade dress. (Id.) It must show that the primary significance of the term in the minds of the
`consuming public is not the product but the producer. (Id.)
`JDPI contends that VIP’s expert, Martin Wolinsky, has already conceded that the
`JDTW bottle dress is not generic, but a source identifier for Jack Daniel’s whiskey. (See Doc.
`104-5 at 23, Deposition of Martin Wolinsky (“Q: Do you consider the Jack Daniel’s
`packaging to be generic? . . . A: I do not consider the Jack Daniel’s package to be generic.”)
`The Court finds that the JDTW bottle dress is a source identifier for Jack Daniel’s
`whiskey. The JDTW bottle dress is a combination bottle and label elements. It includes the
`Jack Daniel’s and Old No. 7 word trademarks. (See Doc. 12 at 5, ¶6.) Under
`Kendall-Jackson, the inquiry is not whether individual features of the trade dress are
`nondistinctive, but whether the whole collection of features taken together are nondistinctive.
`See 150 F.3d at 1050. No reasonable trier of fact could find that the JDTW Bottle Dress, as
`a “whole collection of features taken together,” id., including the Jack Daniel’s and Old No.
`7 trademarks, merely serves as an identifier for any Kentucky Bourbon/Tennessee Whiskey.
`The Court finds that the JDTW Bottle Dress is a source identifier for Jack Daniel’s whiskey;
`it is not generic as a matter of law.
`Inherent Distinctiveness
`Next, VIP argues that JDPI’s infringement counterclaims fail because it cannot prove
`that the JDTW bottle dress is inherently distinctive. (Doc. 110 at 18, 21-23.) JDPI
`acknowledges that its JDTW bottle dress is not inherently distinctive. (Doc. 142 at 30.)
`Acquired Distinctiveness-Secondary Meaning
`Next, VIP argues that JDPI’s infringement counterclaims fail because it cannot prove
`that the JDTW Bottle Dress has acquired distinctiveness through secondary meaning. (Doc.
`110 at 23-28.) In support, VIP contends that JDPI has not established any direct evidence
`of acquired distinctiveness through secondary meaning. (Id. at 24.) Further, VIP contends
`that JDPI’s circumstantial evidence is also lacking. (Id. at 25-28.) VIP argues that although
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`Case 2:14-cv-02057-SMM Document 171 Filed 09/27/16 Page 13 of 35
`
`JDPI relies on extensive sales and advertising, extensive consumer recognition, billions of
`dollars in revenue, and allegedly being one of the most iconic consumer products in
`American history, JDPI has failed to substantiate these vague claims with actual, probative
`evidence. (Id.) Accordingly, VIP contends that the JDTW bottle dress has not acquired
`distinctiveness through secondary meaning. (Id.)
`In support of acquired distinctiveness through secondary meaning, JDPI contends that
`it has both direct and circumstantial evidence in support. Regarding direct evidence, JDPI
`contends that VIP intentionally copied aspects of the JDTW bottle dress. (Doc. 142 at 31-32.)
`JDPI also contends that Dr. Gerald Ford’s likelihood of confusion survey is directly
`probative of secondary meaning. (Id. at 32-33.) In further support, JDPI contends that its
`circumstantial evidence is probative of secondary meaning. (Id. at 33-37.) JDPI cites the
`success of its advertising, it being the best-selling US whiskey for almost 20 years, and
`significant media exposure of its overall product packaging. (Id.)
`Secondary Meaning-Direct Evidence
`“[A] mark has acquired distinctiveness, . . . if it has developed secondary meaning,
`which occurs when ‘in the minds of the public the primary significance of a [mark] is to
`identify the source of the product rather than the product itself.” Wal-Mart, 529 U.S. at 211.
`“It is well established that trade dress can be protected under federal law. The design or
`packaging of a product may acquire a distinctiveness which serves to identify the product
`with its manufacturer or source; and a design or package which acquires this secondary
`meaning, assuming other requisites are met, is a trade dress which may not be used in a
`manner likely to cause confusion as to the origin, sponsorship, or approval of the goods.”
`TrafFix Devices, 532 U.S. at 28.
`The Court finds that JDPI has established direct evidence of secondary meaning. VIP
`admits that it intentionally copied the JDTW bottle dress, and that it did so precisely to
`enable consumers to instantly recognize Jack Daniel’s whiskey as the “target” of the Bad
`Spaniels alleged parody. (See Doc. 110 at 2 (VIP stating that it designed the Bad Spaniels
`dog toy to be a comical parody of a Jack Daniel’s whiskey bottle).) VIP’s copying of the
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`Case 2:14-cv-02057-SMM Document 171 Filed 09/27/16 Page 14 of 35
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`identifiable parts of the JDTW bottle dress was indisputably an attempt to capitalize and free
`ride upon the success of Jack Daniel’s existing secondary meaning. In this case, intentional
`copying by VIP supports an inference of secondary meaning. See Vision Sports v. Melville
`Corp., 888 F.2d 609, 615 (9th Cir. 1989) (stating that proof of copying strongly supports an
`inference of secondary meaning); Lisa Frank, Inc. v. Impact Int’l, Inc., 799 F. Supp. 980, 989
`(D. Ariz. 1992) (same). Thus, JDPI has established direct evidence of secondary meaning.
`Next, the Court also finds that JDPI has established circumstantial evidence of
`acquired distinctiveness through secondary meaning. Between 1997 and 2015, sales of Jack
`Daniel’s whiskey in the United States exceeded 75 million cases, and advertising
`expenditures were in the hundreds of millions of dollars. (Doc. 105 at 1-6.) The sales,
`advertising, and public exposure of JDTW is greater than the facts that established secondary
`meaning in Fiji Water. Between 1997, when FIJI water was first sold, and 2010, Fiji sold
`nearly 65 million cases worldwide and expended more than $65 million in advertising. 741
`F. Supp. 2d at 1177. JDTW has been sold and advertised in the Jack Daniel’s Trade Dress
`for more than 30 years longer than FIJI water. (See Doc. 106 at 1-6, Docs. 106-1 through
`106-4.) Between 1997 and April 30, 2015, JDPI states that total unit sales of JDTW in the
`United States in various sizes exceeded 75 million units, resulting in revenues exceeding ten
`billion dollars. (Doc. 105 at 1-6.) JDPI further states that the vast majority of these sales were
`in packaging bearing the Jack Daniel’s Trade Dress. (Id.)
`Furthermore, VIP admits that through JDPI’s advertising it has created

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