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Barking up the wrong tree: Supreme Court limits trademark parodies

October / November 2023 IP Newsletter

In a unanimous decision, the U.S. Supreme Court has for the first time considered the so-called Rogers test regarding the use of trademarks in “expressive works” — in this case, a dog toy mocking a famous whiskey brand. The Court’s ruling in Jack Daniel’s Properties, Inc. v. VIP Products LLC, makes clear that liability for both trademark infringement and trademark dilution is heavily dependent on just how a defendant uses another’s mark.

Fighting like cats and dogs

VIP Products makes a squeaky, chewable dog toy designed to look much like a bottle of Jack Daniel’s whiskey. Instead of saying “Jack Daniel’s,” the toy says, “Bad Spaniels.” The toy also replaces “Old No. 7 Brand Tennessee Sour Mash Whiskey” with “The Old No. 2 On Your Tennessee Carpet.”

Jack Daniel’s Properties owns the trademarks in the distinctive whiskey bottle and many of the words and graphics on its label. When it demanded that VIP stop selling the toy, VIP filed a lawsuit, seeking a declaratory judgment that the toy neither infringed nor diluted Jack Daniel’s trademarks. Jack Daniel’s counterclaimed for infringement and dilution.

In a bench trial, the trial court found that consumers were likely to be confused about the source of the toy (infringement) and that the toy’s negative associations with dog excrement would harm Jack Daniel’s reputation (dilution). The U.S. Court of Appeals for the Ninth Circuit reversed, ruling for VIP on dilution and sending the case back to the trial court to apply the Rogers test to the infringement claim. The test, named for the case in which it was created, is designed to protect First Amendment interests in expressive works in a trademark context.

The trial court found that Jack Daniel’s couldn’t satisfy the test and granted pre-trial judgment to VIP on infringement. After the appeals court affirmed, Jack Daniel’s appealed to the Supreme Court on both the infringement and dilution claims.

Chewing it over

Under the Rogers test, when a trademark is used in an “expressive work,” it’s not infringement unless the challenged use of the mark 1) has no artistic relevance to the underlying work, or 2) explicitly misleads as to the source of the content of the work. The Supreme Court considered whether Jack Daniel’s should have had to satisfy this “threshold” test to proceed with its infringement case.

The Court found that the test applies only in “nontrademark” cases where the defendant hasn’t used the mark to identify the source of its goods. It held that the test doesn’t apply where, as here, an alleged infringer uses another’s trademark as a designation of source for its own goods. “When a mark is used as a mark,” the high court said, the likelihood-of-confusion inquiry is sufficient to account for the First Amendment interest in free expression.

Notably, the Supreme Court acknowledged that VIP also uses the marks to parody Jack Daniel’s. This type of message is relevant when assessing confusion because consumers are less likely to think that the maker of a mocked product is itself doing the mocking.

But the Court rejected the Ninth Circuit’s “expansive view” of the “noncommercial use” exception to dilution liability as exempting every parody or humorous commentary. Rather, it said, parody is exempt only if not used to designate source.

Paws for thought

The Court stressed that its ruling in this case was narrow. It didn’t determine whether the Rogers test is ever appropriate or how far the noncommercial use exclusion goes. As the concurrence notes, such questions remain for resolution another day.

© 2023

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