Did the U.S. Supreme Court take a bite out of the Rogers test in a dog toy case?

On June 8, the United States Supreme Court issued its ruling in Jack Daniel’s Properties, Inc. v. VIP Products LLC (“Jack Daniel’s”), 599 U.S. --- (2023), reversing the Ninth Circuit on the issue of the scope of fair use in the trademark context. Jack Daniels involved a dispute between the famous whiskey company and VIP Products LLC, a company that makes squeaky dog toys. One of VIP’s products was designed to look like a bottle of Jack Daniel’s whiskey. Instead of “Jack Daniel’s,” the toy was labeled “Bad Spaniels,” and the Jack Daniel’s logo “Old No. 7 Brand Tennessee Sour Mash Whiskey” was changed to “The Old No. 2 On Your Tennessee Carpet” on VIP’s dog toy.

The district court rejected VIP’s defense based on the First Amendment and ruled for Jack Daniel’s. VIP had relied in the district court on the test set out in Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989). The Rogers test attempts to balance trademark protections against the public’s interest in free expression: “[When] [l]imited to [its] core purpose—avoiding confusion in the marketplace—a trademark owner’s property rights play well with the First Amendment.” Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900 (9th Cir. 2002). “The problem arises when trademarks transcend their identifying purposes. Some trademarks enter our public discourse and become an integral part of our vocabulary. How else do you say that something’s ‘the Rolls Royce of its class’?” Id.

As the Ninth Circuit had stated in numerous cases, “[w]hen artistic expression is at issue, … we have held that the traditional [trademark likelihood-of-confusion test] fails to account for the full weight of the public’s interest in free expression. … If we were to disregard the expressive value that some marks assume, trademark rights would grow to encroach upon the zone protected by the First Amendment. … A trademark owner does not have the right to control public discourse by enforcing his mark.” Punchbowl, Inc. v. AJ Press, LLC, 52 F.4th 1091, 1096-97 (9th Cir. 2022) (cleaned up).

As adopted by the Ninth Circuit in Mattel, the Rogers test requires the following: “the defendant must first make a threshold legal showing that its allegedly infringing use is part of an expressive work protected by the First Amendment. … If the defendant meets this burden, the Lanham Act does not apply unless the defendant’s use of the mark is (1) not artistically relevant to the work or (2) explicitly misleads consumers as to the source or content of the work.” Punchbowl, 52 F.4th at 1097 (cleaned up).

The Ninth Circuit reversed the district court, ruling that Rogers did apply. “[T]he Bad Spaniels dog toy, although surely not the equivalent of the Mona Lisa, is an expressive work. … The toy communicates a humorous message, … using word play to alter the serious phrase that appears on a Jack Daniel’s bottle … with a silly message. … The effect is a simple message conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner.” VIP Products LLC v. Jack Daniel’s Properties, Inc., 953 F.3d 1170, 1175 (9th Cir. 2020) (cleaned up). “Bad Spaniels comments humorously on precisely those elements that Jack Daniels seeks to enforce here.” Id. The Ninth Circuit concluded that “[b]ecause Bad Spaniels is an expressive work, the district court erred in finding trademark infringement without first requiring [Jack Daniel’s] to satisfy at least one of the two Rogers prongs.” Id. at 1175-76.

Justice Kagan, writing for a unanimous Court, reversed the Ninth Circuit. Justice Kagan concluded that Rogers did not apply because VIP was using the Jack Daniel’s mark—though modified, perhaps in parody—as its own mark, thus taking it out of the scope of Rogers: “Without deciding whether Rogers has merit in other contexts, we hold that it does not when an alleged infringer uses a trademark in a way the Lanham Act most cares about: as a designation of source for the infringer’s own goods. … VIP used the marks derived from Jack Daniel’s in that way, so the infringement claim here rises or falls on likelihood of confusion.” Jack Daniel’s Properties, Inc. v. VIP Products LLC, 594 U.S. ---, Slip Op. at 10 (2023) (cleaned up).

Justice Kagan’s opinion appears to announce a new bright line, cabining the Rogers test, holding that it would not apply where an alleged infringer used another’s mark as its own—even if modified or transformed in parody. “[T]he Rogers test has applied only to cases involving non-trademark uses—or otherwise said, cases in which the defendant has used the mark at issue in a non-source-identifying way.” Id. at 13.

Examples the Court gives of Rogers being appropriately applied to a defendant’s use of another’s mark “in a non-source-identifying way” are the use of “Barbie” for the title of a song in Mattel, supra, 296 F.3d at 901 and a sports artist depicting the Alabama Crimson Tide’s trademarked uniforms in an artwork in University of Ala. Bd. Of Trustees v. New Life Art, Inc., 683 F.3d 1266, 1279 (11th Cir. 2012).

Justice Kagan’s point was that, in these examples, the alleged infringer was not using the trademark as a source identifier for their goods—the use was more incidental.

Justice Kagan took greatest issue with what she characterized as the Ninth Circuit’s undue expansion of the protection of Rogers: “[W]here we most dramatically part ways with the Ninth Circuit [is where it concluded] that because Bad Spaniels communicates a humorous message, it is automatically entitled to Rogers’ protection.” Jack Daniel’s, supra, 599 U.S. ---, Slip Op. at 15 (cleaned up). “On that view, Rogers might take over much of the world.” Id. Justice Kagan observed that almost all trademarks are expressive in some way: “the Ninth Circuit’s expansion on Rogers potentially encompasses just about everything because names, phrases, symbols, designs, and their varied combinations often contain some expressive message, unrelated to source.” Id. at 16 (cleaned up). “[F]ew cases would even get to the likelihood-of-confusion inquiry if all expressive content triggered the Rogers filter. In that event, the Rogers exception would become the general rule, in conflict with courts’ long-standing view of trademark law.” Id.

Ultimately, the difference in opinion between the Supreme Court and the Ninth Circuit appeared to be with regard to their respective understandings of how trademark law was to be balanced against the First Amendment. The Supreme Court’s view was clearly that the trademark law “generally prevails over the First Amendment when another’s trademark (or a confusingly similar mark) is used without permission as a means of source identification.” Id. at 17. “[F]or those uses, the First Amendment does not demand a threshold inquiry like the Rogers test. When a mark is used as a mark (except, potentially, in rare situations), the likelihood-of-confusion inquiry does enough work to account for the interest in free expression.” Id.

The Supreme Court does appear to have taken a bite out of the Rogers test—just as they appeared to pare back fair-use defenses in the copyright context in the Warhol case a few weeks before. See Andy Warhol Foundation for the Visual Arts v. Goldsmith, 143 S.Ct. 1258 (2023). Still, Rogers survives, though one wonders for how long. Justice Gorsuch’s concurrence in Jack Daniels raises a few interesting (and potentially ominous) questions about the origins of the test: “[I]t is not entirely clear where the Rogers test comes from—is it commanded by the First Amendment, or is it merely gloss on the Lanham Act, perhaps inspired by constitutional-avoidance doctrine?” Id. (Gorsuch, J., concurring). These are questions many years of decisions dealing with Rogers—including this most recent Supreme Court decision—have seemed to largely sidestep.

Rogers appears to have emerged due to courts’ discomfort with the scope of trademark rights potentially encroaching on the public’s interest in a free and wide-open discourse—an interest that implicated, in ways not precisely delineated by previous courts, the First Amendment. This discomfort was fueled, it seems, in part, by the recognition, as noted in Mattel, that trademarks sometimes become part of the public’s vocabulary, take on expressive values of their own, sometimes in ways independent of their original function as indicators of product source. (Think of how we might use “Jello,” “Frisbee,” “Magic Marker,” “Adrenalin,” “Popsicle,” “Yo-Yo,” “Zipper,” “Escalator,” “Ping Pong,” etc. in everyday speech. Or how a rapper might decide to call himself “Q-Tip.” These words were all once trademarked—some of them still are.)

While the Supreme Court’s decision here points out that the key point here is that VIP used the Jack Daniel’s mark, in modified form, as its own mark, triggering the core concerns of trademark law regarding source confusion, VIP’s use was seen by the Ninth Circuit as falling squarely in the realm of parody, which had been deemed a kind of paradigmatic form of fair use (at least in the copyright context) in the Supreme Court’s earlier decision in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 588 (1994) (finding 2 Live Crew’s rap parody of Roy Orbison’s song “Pretty Woman” was fair use and not infringing). The Supreme Court suggested that, here, the question of parody could simply be a factor in the standard likelihood-of-confusion test. Jack Daniels, 599 U.S. ---, Slip Op. at 18-19.

The balance between the interests in preventing consumer confusion and maintaining the right to free expression will continue to present difficult questions for the courts to work through. Perhaps the balance will continue to Ping Pong, or Yo-Yo. We’ll have to remember to Google it.