On June 8, 2023, the U.S. Supreme Court clarified two intellectual property issues in deciding Jack Daniel's Properties, Inc. v. VIP Products LLC:
- When an alleged infringer uses a trademark as a designation of source for the infringer’s own goods, the Rogers test does not apply; and
- The Lanham Act’s exclusion from dilution liability for “[a]ny noncommercial use of a mark,” §1125(c)(3)(C), does not shield parody, criticism, or commentary when an alleged diluter uses a mark as a designation of source for its own goods.
In a unanimous opinion by Justice Elena Kagan, the high court observed that the Rogers test is inappropriate when an infringer “has used a trademark as a trademark. That kind of use falls within the heartland of trademark law and does not receive special First Amendment protection.” The Rogers test “requires dismissal of an infringement claim at the outset unless the complainant can show” that the “challenged use of a mark ‘has no artistic relevance to the underlying work’ or that it ‘explicitly misleads as to the source or content of the work.”
The case arises from VIP’s dog toys which parody the appearance of the distinctive Jack Daniel’s whiskey bottle. After Jack Daniel’s issued a cease and desist request, VIP filed suit, seeking a declaratory judgment that its product had neither infringed nor diluted Jack Daniel’s trademarks. Jack Daniel’s counterclaimed for trademark infringement and dilution. Jack Daniel’s prevailed in the U.S. District Court for the District of Arizona, but the decision was reversed by the U.S. Court of Appeals for the Ninth Circuit, which remanded the infringement claim subject to the Rogers test and found for VIP on the dilution claim. On remand, the District Court applied the Rogers test and granted summary judgment to VIP on the infringement claim. This time, the Ninth Circuit affirmed the District Court and the U.S. Supreme Court granted certiorari.
The U.S. Supreme Court’s decision vacated the judgment below and remanded for further proceedings consistent with its opinion.
