The Supreme Court held in the recent Jack Daniel’s v. VIP Products case that the Rogers test does not apply in cases where a trademark is used as a source identifier, even if that use is also considered expressive or parodic. In such cases, the expressive use may factor into the likelihood of consumer confusion infringement analysis but does not avoid it.
Let’s back up. U.S. trademark law protects consumers by creating liability for the use of wording or graphics that are confusingly similar to those used by trademark owners in order to identify the source of an unauthorized third party’s goods or services.
The so-called Rogers test emerged in 1989 after Ginger Rogers sued to block the release of the film “Fred and Ginger” by Federico Fellini, claiming the film title violated her trademark rights. The Second Circuit Court of Appeals determined that artists should be permitted to use trademarks of others so long as the mark is both (a) artistically relevant to the underlying work, and (b) the work does not explicitly mislead as to the source of the content of the work.
VIP initiated the present proceeding almost a decade ago after receiving a cease-and-desist letter from Jack Daniel’s concerning its “Bad Spaniels” Silly Squeakers dog toy, shaped like a bottle of Jack Daniel’s with similar trade dress, but with slight changes to the text:
- “Bad Spaniels” instead of “Jack Daniel’s”
- “The Old No. 2 On Your Tennessee Carpet” instead of “Old No. 7 Tennessee Sour Mash Whiskey”
- “43% poo by vol.” and “100% smelly” instead of “40% alc. by vol. (80 proof)”
In 2017, the District of Arizona found trademark infringement, holding that VIP’s alleged parodic use of Jack Daniel’s registered trademarks and trade dress were not protected by the First Amendment under the Rogers test. The Ninth Circuit Court of Appeals reversed and remanded the case to the District Court which found in favor of VIP based on the findings of the Ninth Circuit. The Ninth Circuit upheld this decision on appeal.
This appeal to the Supreme Court by Jack Daniel’s followed.
The Supreme Court vacated the Ninth Circuit’s judgment, stating: “Here is where we most dramatically part ways with the Ninth Circuit, which thought that because Bad Spaniels ‘communicates a humorous message,’ it is automatically entitled to Rogers’ protection . . . On that view, Rogers might take over much of the world.”
The Supreme Court remanded this case to the district court to determine whether the trademarks used on the Bad Spaniels toy are likely to cause consumer confusion with Jack Daniel’s trademarks. VIP will have to raise its First Amendment-based parody defense as part of the multifactor likelihood of confusion analysis.
Much of the oral arguments in March 2023 focused on whether to keep the Rogers test as is, clarify it, or discard it. Despite its protestations that this decision does not opine on the Rogers test, the Supreme Court’s decision seems to eviscerate the first part of the test as it relates to consumer products. Even if the use of a mark is artistically relevant to the product, if it also serves to identify its source, the likelihood of consumer confusion analysis should be applied. Justice Gorsuch’s concurrence briefly questioned the Rogers test’s legitimacy and warned lower courts to handle the test with care.
This decision will make it easier for brand owners to defend their trademarks against alleged artistic or parodic use by third parties, which also serves to piggyback on the goodwill of the brands. The Rogers test appears unlikely to apply in the context of consumer products that leverage another party’s trademark, and its application will likely be relegated to uses for artistic works like books, shows, and movies.
This decision may be indicative of a trend by the Court (as in the Andy Warhol case) to temper alleged First Amendment rights in favor of the rights of intellectual property owners. In an age where copying is easier, artistic expression is prevalent, and AI is on the rise, it will be interesting to follow along.
