On June 8, 2023, the Supreme Court issued a highly anticipated decision in Jack Daniel's Properties, Inc. v. VIP Products LLC, No. 22-148 (U.S.). The decision left intact existing legal protections for the use of trademarks and trade dress in expressive works, but held that they did not apply where a product used another party's marks to designate the source of its own goods or services.
The case had threatened to limit the Rogers v. Grimaldi doctrine, which allows the creators of expressive works to incorporate trademarks if the marks are artistically relevant and not explicitly misleading. Jack Daniel's argued that a squeaky, chewable dog toy designed by VIP Products to resemble a bottle of Jack Daniel's whiskey infringed and diluted its trademarks and trade dress. VIP Products countered that its use was subject to the Rogers test and, under that test, was not infringing. It also sought refuge from Jack Daniel's dilution claim under the Lanham Act's statutory exclusion from liability for non-commercial trademark use.
The Court reversed, in a unanimous decision. It held that when a defendant uses a mark as a designation of source for its own goods or services, the Rogers test does not apply to trademark infringement claims (regardless of whether the use of the mark communicates some message beyond source identification), and similarly the Lanham Act's non-commercial exclusion does not shield parody, criticism or commentary when an alleged diluter uses a mark to designate its own goods. It remanded to the Ninth Circuit for analysis consistent with these rulings.
Procedural History
Jack Daniel's sent a cease and desist letter to VIP Products complaining that VIP's "Bad Spaniels" dog toy, which mimics the shape and label design of a Jack Daniel's Old No. 7 Black Label Tennessee Whiskey bottle, replacing the details about the whiskey with dog-themed bathroom humor, infringed and diluted Jack Daniel's trademarks. VIP brought a lawsuit seeking a declaratory judgment that its toy did neither. Jack Daniel's counterclaimed for trademark infringement and dilution. VIP Products argued that its use of the Jack Daniel's trademarks in its parody dog toy was protected from infringement liability by the Rogers test as an expressive work, and protected from dilution liability by the Lanham Act's non-commercial use exclusion as a parody. In 2017, the District Court for the District of Arizona rejected VIP's arguments and held a bench trial, holding VIP liable on both counts.
VIP Products appealed, arguing that the District Court erred in finding trademark infringement without requiring Jack Daniel's to first satisfy the Rogers test, which requires a plaintiff to show that the defendant's use of a mark either (1) is not artistically relevant to the underlying work or (2) explicitly misleads consumers as to the source or content of the work, before conducting its likelihood of confusion analysis. As to dilution, VIP argued that its use of the Jack Daniel's trade dress was for the purpose of parody, rather than commercial use as required by the Lanham Act for claims of dilution by tarnishment. In 2020, the Ninth Circuit reversed the lower court's findings as to both infringement and dilution, remanding the case for retrial under the Rogers test and ruling in VIP's favor on the dilution claim.
On remand, the District Court applied the Rogers test, granting summary judgment in VIP's favor. Jack Daniel's sought Supreme Court review, arguing that the Circuit Court's rulings harmed mark owners' ability to protect their marks and opened the door to a "flood of misleading rip-offs." The Supreme Court granted certiorari.
The Decision
The Court did not, as many creators of expressive works had feared, take a position on the merits of the Rogers test, and it largely preserved the existing caselaw regarding expressive use. Thus, the Court left intact Rogers and the many cases that have applied its standard to novels, songs, films and other works which use others' trademarks to perform some expressive function, rather than to designate the source of the work. See, e.g. Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 901 (9th Cir. 2002) (use of Barbie name in song "Barbie Girl" was not infringing); Louis Vuitton Mallatier S.A. v. Warner Bros. Entertainment Inc., 868 F.Supp.2d 172, 180 (S.D.N.Y. 2012) (depiction of Louis Vuitton trademark on luggage in movie not infringing).
Instead, the Court ruled that Rogers does not apply when an alleged infringer uses a mark as a designation of source for its own goods, i.e., "when trademarks are used as trademarks." Indeed, the Court observed that the doctrine had always been a "cabined doctrine," applying exclusively to non-trademark uses.
Moreover, whether a mark has some expressive content in addition to being a source identifier, i.e., whether it "conveys some message on top of source," is of no import; when the use is "at least in part" for source identification, the Court stated, "Rogers has no proper role."
In the case at bar, VIP was concededly using the Jack Daniel's marks and dress as source identifiers of its dog toy, rendering Rogers inapplicable, and the traditional likelihood of confusion test applied. That VIP also used the mark for some expressive purpose—parody or commentary—did not change this outcome. While the expressive aspects "may properly figure in assessing the likelihood of confusion," they did not warrant applying Rogers. The Court remanded for application of the likelihood of confusion factors.
The Court found dilution to be an easier call. The Ninth Circuit had held that VIP's use fell under the Lanham Act's exclusion from dilution liability for the "noncommercial use of a mark," under §1125(c)(3)(C), because it was parodic. The Supreme Court found that this expansive interpretation of that exclusion "puts the noncommercial exclusion in conflict with the statute's fair-use exclusion." The fair-use exclusion expressly applied to parody, but carved out situations when the use is "as a designation of source for the person's own goods or services." §1125(c)(3)(A). The Ninth Circuit's approach negated that carve-out.
The Court stressed that its opinion was narrow. "We do not decide whether the Rogers test is ever appropriate, or how far the 'noncommercial use' exclusion goes"—only that neither applies when the alleged infringer's use is source-identifying. It vacated and remanded for proceedings consistent with its holdings.
Justice Sotomayor, with Justice Alito joining, endorsed the Court's opinion but wrote separately to emphasize that, in the context of parodies and potentially other uses protected by the First Amendment, courts should treat survey results skeptically. Since surveys may reflect a mistaken belief among respondents that parodies require permission from the owner of the underlying mark, and could therefore be manipulable, "[w]ell-heeled brands with the resources to commission surveys would be handed an effective veto over mockery."
In another short concurrence, Justices Gorsuch, Thomas, and Barrett indicated some skepticism regarding the origin and applicability of the Rogers test, and cautioned lower courts to be "attuned" to the fact that "it is not obvious that Rogers is correct in all its particulars," without indicating what portions of the test left them unconvinced of its validity.
Takeaways
The Court's decision maintains the status quo of First Amendment protection for artists and creators who use trademarks in non-source-identifying expressive works, but makes clear that traditional likelihood of confusion applies to source-identifying uses of others' marks, even if a use has some expressive aspects. The decision thus gives comfort to artists and content creators while making clear to markholders that products with expressive elements do not receive blanket protection against liability for trademark infringement or dilution, bolstering their ability to protect their brands against the threat of confusion and harm to goodwill when an alleged infringer/diluter uses the trademark, in whole or part, to identify the source of its goods.
The decision is welcome news for both rightsholders and creators for its advancement of trademark law's paramount goal of avoiding consumer confusion, careful balancing of the concerns of both groups, and the clarity it provides about when the Rogers test should be used.
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