In 1989, the Second Circuit Court of Appeals, in what has become known as the Rogers Test, held that a suit for trademark infringement based on the use of an accused mark in an expressive work (and/or a use in its title) should be dismissed at the outset unless the trademark owner could show that the challenged use “has no artistic relevance to the underlying work” or the challenged use “explicitly misleads as to the source or content of the work.” But the Second Circuit made clear that its Rogers Test was not a general rule and was not to be applied when the accused mark was used to indicate source, and the Second Circuit has continued to reach that result in such cases.

On June 8, the U.S. Supreme Court rebuked the Ninth Circuit Court of Appeals for failing to follow that admonition, holding, in an expressly narrow opinion, that the Rogers Test does not apply when the challenged use of a mark is a use that indicates source, i.e. is a use as a mark. The Court also rebuked the Circuit Court for ignoring in the federal dilution statute the exclusion of accused uses that are designations of origins from the fair use exception to trademark dilution. Equally informative are two concurring opinions that (i) warn lower courts to use caution in treating the results of survey evidence in cases implicating First Amendment concerns, and (ii) state that lower courts should be attuned to the fact that the Rogers opinion may not be correct in all of its particulars.

The case is Jack Daniels Properties, Inc. v. VIP Products, LLC, Case No. 22-148, Decided June 8, 2023, arising out of a claim of trademark infringement and dilution based on VIP’s alleged parodic use of a modified Jack Daniels label on its squeaky dog toy. One of VIP’s modifications was changing the well-recognized Old No. 7 on the Jack Daniels label to Old No, 2 on the squeaky toy which informed, at least in substantial part, Jack Daniels claim of trademark dilution by tarnishment.