In a decision to be applauded by brand owners throughout the country, the Supreme Court clarified the balance between trademark rights and First Amendment interests in its decision in the Jack Daniel’s case, Jack Daniel’s Props., Inc. v. VIP Prods. LLC, No. 22-148 (June 8, 2023). Vacating the judgment of the U.S. Court of Appeals for the Ninth Circuit, the Court held that an accused infringer does not receive special First Amendment protection when it has used a trademark to designate the source of its own goods. Such use is subject to the traditional test for likelihood of confusion, the Court held, not a threshold test derived from the First Amendment such as that contained in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).
VIP Products manufactured a parody dog toy called “Bad Spaniels.” The Bad Spaniels dog toy is shaped and colored like a Jack Daniel’s whiskey bottle, with similarly stylized labels stating “Bad Spaniels,” “The Old No. 2,” and “on your Tennessee Carpet.” Following a demand that it cease selling the Bad Spaniels dog toy, VIP Products sought a declaration of non-infringement while Jack Daniel’s countersued with its claims of trademark infringement and dilution by tarnishment in the District of Arizona. Reversing the district court’s initial findings, the Ninth Circuit ultimately held that the dog toy was an expressive work entitled to First Amendment protection. The Ninth Circuit ruling in favor of VIP Products relied on the conclusion that Jack Daniel’s could not satisfy either prong of the Rogers test, which balances free expression under the First Amendment against the trademark protections of the Lanham Act. Under the Rogers test, a plaintiff’s infringement claim will succeed if the use of the mark either (1) has no artistic relevance to the underlying work, or (2) explicitly misleads as to the source or content of the work. The Court agreed to review the decision and heard oral arguments on March 22, 2023, where they had to weigh whether the humorous parody of Jack Daniel’s whiskey should be subject to the typical likelihood-of-confusion and dilution analysis under the Lanham Act, or instead receive heightened First Amendment protection.
In disagreeing with the Ninth Circuit’s approach, the Court emphasized that the mere fact that a defendant’s use may communicate a humorous message – such as in a parody – does not convert an ordinary commercial product into an expressive work worthy of heightened First Amendment protection. The Court observed that the Ninth Circuit’s expansion of Rogers “potentially encompasses just about everything because names, phrases, symbols, designs, and their varied combinations often contain some expressive message unrelated to source.” Jack Daniel’s Props., No. 22-148, slip op. at 16 (citation and internal quotation marks omitted). The Court’s holding was explicitly “narrow,” and held that “Rogers does not apply when the challenged use of a mark is as a mark.” Id. at 13. As for dilution, the Court noted that the Lanham Act excludes from dilution liability any noncommercial use of a mark. This fair use exclusion notwithstanding, the Court held “that the noncommercial exclusion does not shield parody or other commentary when its use of a mark is similarly source-identifying.” Id. at 14.
To be sure, the Court’s opinion noted that the expressive aspect of an accused product may have an impact on whether consumers are likely to be confused under the traditional likelihood-of-confusion test. For example, consumers often are amused by a parody but not confused by it. The very nature of the parody – which “conjures up” the original but also pokes fun at it – may avoid confusion as to source or sponsorship. But the Court made it clear that the likelihood of confusion or dilution test – not the Rogers test – should be the guiding test when the defendant is using its mark in a source-identifying manner. Such uses are subject to normal trademark scrutiny and “must meet an infringement claim on the usual battleground of ‘likelihood of confusion.’” Id. at 14.
The practical effect of the Court’s ruling is that more trademark cases involving “expressive works” will have to bypass potential early dismissal under the Rogers test and confront the traditional likelihood-of-confusion test under the Lanham Act. Moreover, given the Court’s holdings as to the applicability of the Rogers test in infringement cases and the noncommercial fair use exclusion in dilution cases hinges on whether the accused trademark is being used as a source-identifier, we expect to see further development of caselaw around what it means to use a trademark as a trademark. Despite the “narrow” ruling, brand owners, and particularly owners of famous brands, will undoubtedly use this decision as a basis to more rigorously enforce their rights, even in those instances where their brands are being portrayed as a parody.
 The Rogers test has been adopted by some, but not all, United States Courts of Appeals. Notably, the Court specifically did not decide whether the Rogers test is ever appropriate, holding only that it declined to adopt the Rogers test as the appropriate test “when the challenged use of a mark is as a mark.” Jack Daniel’s Props., No. 22-148, slip op. at 13.