Jack Daniel's and Surveys: Strange Bedfellows or Perfect Pair?

Welcome to?Lanham Act Surveys for Lawyers, your resource devoted exclusively to making survey evidence discussions fun and informative, with Daubert-proofing tips and strategies along the way.?We provide insights and timely updates to help guide trial counsel in developing consumer surveys for use in federal courts, the TTAB, and other ports of call where trademark and advertising disputes are routinely litigated.

Jack Daniel's and Surveys: Strange Bedfellows or Perfect Pair?, Op. 1., No. 2

An epic canine controversy is pending before the U.S. Supreme Court. On one side sits Jack Daniel's Properties, Inc., the maker of the ubiquitous Tennessee whiskey since 1875. On the other side sits VIP Products, LLC, the purveyor of "Bad Spaniels," the artsy-fartsy, defecating doggie toy. Loads of virtual ink have been spilled over this case. There is excellent commentary and insight about its implications from the likes of David Bernstein , WIPR - World IP Review , and other luminaries in the trademark arts. Distilled to its essence, this dispute is largely about whether the First Amendment should shield VIP Products from Lanham Act liability. There is also an important consumer survey issue at play here, and that's the angle we are examining today in Lanham Act Surveys for Lawyers. So, let's transport back to the early days when this case was pending before the trial court.

During a bench trial before the Hon. Stephen M. McNamee of the the U.S. District Court for the District of Arizona, Jack Daniel's presented--among other evidence--a consumer survey designed by the late, great Dr. Gerald Ford of Ford Bubala. Dr. Ford's survey showed 29% of the survey respondents believed that Bad Spaniels was made or put out by Jack Daniel's. The trial court gave "prevailing weight" to Dr. Ford's expert opinion and found it "establishes likelihood of confusion in this case." VIP Prods., LLC v. Jack Daniel's Props., 291 F.Supp.3d 891, 908 (D. Ariz. 2018). The Ninth Circuit reversed with nary a mention of Dr. Ford's survey. Why would the Court ignore evidence that this canine caper caused confusion? Enter Stage Left: Rogers v. Grimaldi.

The Ninth Circuit held that because Bad Spaniels was an "artistic work" the traditional "likelihood of confusion" test did not rule the day. Instead, in such circumstances, a trademark owner needs to establish that the "defendant's use of the mark is either (1) not artistically relevant to the underlying work or (2) explicitly misleads consumers as to the source or content of the work." VIP Prods. Ltd. Liab. Co. v. Jack Daniel's Props., 953 F.3d 1170, 1174 (9th Cir. 2020) (citing Rogers v. Grimaldi). Although the Court upheld the trial court's findings on appeal, it reversed and remanded for the trial court to make a determination under the Rogers v. Grimaldi framework.

On remand, surely Dr. Ford's survey evidence showed that Bad Spaniels was "explicitly misleading" consumers, right? Not so. The trial court determined (based on previous Ninth Circuit authority), that this "is a high bar that requires the use to be an explicit indication, overt claim, or explicit misstatement about the source of the work." The focus of this inquiry "is on the nature of the behavior of junior user; the consumer's perception or confusion is irrelevant." Thus, Dr. Ford's survey--and the "prevailing weight" given to it by the trial court--no longer held sway. The trial court held that Jack Daniels could not satisfy the Rogers v. Grimaldi test and--quite begrudgingly--gave Bad Spaniels a hall pass. ?VIP Prods. LLC v. Jack Daniels Prop., 2021 WL 5710730.?The Ninth Circuit affirmed, and the Supreme Court has now stepped into the breach.

The Takeaways. We will soon learn the fate of Bad Spaniels. Will #Scotus put it on ice, or give it a shot in the arm? And, will survey evidence that shows confusion, deception, or mistake be relevant in the context of trademark disputes involving an "expressive work?" We should hopefully know by summer, which just so happens to be Lynchburg Lemonade high season. Until then, trial counsel should be mindful of the current state of play at least in the Ninth Circuit and other circuits that have followed suit. See, e.g., MGFB Props., Inc. v. Viacom Inc., 54 F.4th 670, 682 (11th Cir. 2022)(rejecting survey evidence of confusion because “any misunderstanding represented by the survey data was not engendered by any overt claim" as required under the Rogers v. Grimaldi test). The Court's decision should give us plenty to chew on and we will keep our readers posted.

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