On June 8, 2023, the U.S. Supreme Court decided Jack Daniel’s v. VIP Products, a case “about dog toys and whiskey”—items that, as Justice Elena Kagan wrote for the Court, “seldom appear[] in the same sentence.” Whiskey-maker Jack Daniel’s had accused VIP Products of violating trademark law by selling a dog toy marketed as “Bad Spaniels” and designed to look like a bottle of Jack Daniel’s Old No. 7 Whiskey. Applying the so-called Rogers test—named for an early Second Circuit ruling in this area—the Ninth Circuit found that “Bad Spaniels” qualified as an expressive work entitled to First Amendment protection as a “humorous” parody.

The Supreme Court unanimously reversed. As the Court held, “when the accused infringer has used a trademark to designate the source of its own goods—in other words, has used a trademark as a trademark”—then the accused infringement generally gets no special First Amendment treatment and the case is governed by trademark law’s standard “likelihood of confusion” test.

The Court left for another day whether any “threshold inquiry” under the First Amendment “is ever warranted.” That means the Rogers test—which for more than 30 years has afforded varying levels of immunity from trademark liability to expressive works such as music, arts, television, movies, and video games—remains undisturbed. But the decision also raises questions about Rogers’ future. Three justices wrote separately to invite a direct challenge to Rogers—and to suggest the lower courts reexamine the doctrine.

The Rogers Test and the Intersection of Trademark Law and Expressive Works

Federal trademark law (as codified in the Lanham Act) not only protects trademark owners from counterfeits, copies, and actual confusion—but also from the likelihood of consumer confusion as to source, sponsorship, or affiliation. In some cases, courts have recognized a tension between that broad goal and the First Amendment goal of encouraging speech and expression. To avoid chilling expression by overzealous Lanham Act assertions, many courts have used the First Amendment to cabin trademark suits.

The seminal case is Rogers v. Grimaldi. There, the Second Circuit held in 1989 that actress Ginger Rogers (1911-1995) could not sue the filmmakers who used her name in the title of their film, Ginger and Fred. In that court’s view, the Lanham Act should be narrowed to exclude expressive works unless the copying has no artistic relevance to the underlying work or, if it does have relevance, directly misleads consumers as to the source of the work. Many courts across the country have adopted this threshold test, the so-called Rogers doctrine, limiting Lanham Act claims against expressive works unless the use 1) lacks artistic relevance or 2) is intentionally misleading.

Rogers and its progeny have provided expressive works with broad protection from trademark liability. The doctrine has been applied to many expressive works, including paintings, television series, greeting cards, and video games. Fox, for instance, defeated a suit brought by Empire Records relating to the “Empire” television show. Rockstar Game’s Grand Theft Auto: San Andreas defeated a trademark suit brought by the owner of a Los Angeles business alleging that Rockstar had copied his establishment’s façade. And the doctrine was applied to defeat a suit by General Motors against Activision for using the Humvee trade dress in Call of Duty. Rogers has—in particular for video games—protected realistic depictions of virtual worlds, even when they use recognizable trademarks.

Rogers Remains Standing

Jack Daniel’s—supported by the United States as amicus curiae—asked the Supreme Court to abrogate the Rogers doctrine. The Court had never addressed the question presented to the Second Circuit, and neither the text of the Lanham Act nor the First Amendment include a threshold inquiry for expressive works. According to Jack Daniel’s, the likelihood of confusion test, alone, would suffice.

Absent something like Rogers, of course, expressive works could be subjected to the full panoply of trademark litigation expenses with very few offramps. And since many courts have in recent years made summary judgment harder to obtain for trademark defendants, expressive works would often likely need to endure expensive trials. At argument, many of the justices expressed concern about the Rogers test’s lack of firm grounding. But the questioning revealed no consensus on what—if anything—should replace Rogers.

The Court, however, sidestepped the question of whether Rogers is sound as a matter of first principles, choosing instead to conclude that it does not apply when the accused infringer uses the trademark as a trademark—e.g., uses the plaintiff’s mark to designate the source of the defendant’s goods.

Use of a mark merely within an expressive work, though, remains squarely within Rogers. On that point, the Court cited with approval a 2012 decision involving Louis Vuitton and the movie The Hangover Part II. There, the U.S. District Court for the Southern District of New York dismissed Louis Vuitton’s trademark suit against Warner Brothers because the film was not using Louis Vuitton as its own identifying trademark.

But Justice Neil Gorsuch—joined by Justices Clarence Thomas and Amy Coney Barrett—wrote separately to “underscore” that “it is not entirely clear where the Rogers test comes from” and that “it is not obvious that Rogers is correct in all its particulars.” Justice Gorsuch invited another case: “All this remains for resolution another day” and “lower courts should be attuned to that fact.”

Implications

Rogers has survived, but its future appears less certain. Many courts have arguably expanded Rogers beyond the heartland identified by the Supreme Court in Jack Daniels. For that reason—and especially in the Ninth Circuit—expect uncertainty in the short term regarding the exact contours of the Rogers doctrine. In the long term, the Court may fully revisit Rogers on the merits. And even before then, lower federal courts may take Justice Gorsuch’s invitation to reexamine the balance between the Lanham Act and the First Amendment.

In the meantime, incidental or realistic use of a trademark within expressive works should continue to enjoy robust First Amendment protections. But careful attention should be paid to ensure that such uses do not cross the line into uses as a trademark for the expressive work itself.

For those with trademark litigation in progress or on the horizon, the opinions have a few practical warnings. VIP Product’s “rote” allegation in its declaratory judgment complaint that it used Jack Daniel’s trademarks was held against it in the Court’s analysis. Defendants seeking to rely on Rogers should carefully review allegations and written discovery with the Court’s opinion in mind. At the same time, Justice Sonia Sotomayor filed a concurring opinion—in which Justice Samuel Alito joined—urging “caution” when relying on survey evidence in parody cases. The implications of that opinion should be considered by those relying on surveys in trademark litigation.

Wilson Sonsini attorneys, on behalf of alcohol beverage industry associations, argued as amici in part that Rogers should be read to “distinguish using a trademark to communicate a commercial product’s source from unconfusing artistic uses of marks”—the position eventually adopted by the Supreme Court.

Conor Tucker and Yifeng Li (summer associate) contributed to this Wilson Sonsini Alert.