Last week, the U.S. Supreme Court issued a 9-0 decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 22-148 (June 8, 2023), holding that the First Amendment does not protect parody as fair use under the Lanham Act when the parody itself is a source designator.
VIP makes a “Bad Spaniels” dog toy, which resembles bottles of Jack Daniel’s Old No. 7 Black Label Tennessee Sour Mash Whiskey but with a label stating, “Bad Spaniels – The Old No. 2 on your Tennessee Carpet.” After Jack Daniel’s demanded that VIP stop selling the toy, VIP filed suit seeking a declaratory judgment of non-infringement and non-dilution of Jack Daniel’s trademarks. Jack Daniel’s counterclaimed for infringement and dilution. In a bench trial, the district court held that consumers were likely to be confused about the source of the Bad Spaniels toy, and that the toy’s negative associations with dog excrement (e.g., “The Old No. 2”) would harm Jack Daniel’s reputation. The Ninth Circuit reversed, holding that the toy was protected speech under the Rogers test, which regulates the intersection of the Lanham Act and protected speech under the First Amendment. The Rogers test requires dismissal of a trademark claim unless the complainant can show either 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 the content of the work. On remand, the district court found that Jack Daniel’s failed the Rogers test, and the Ninth Circuit affirmed. Jack Daniel’s petitioned, and the Supreme Court granted certiorari.
The unanimous Court held that the Rogers test does not apply when an alleged infringer uses a trademark as a designation of source for the infringer’s own goods. Without taking a position on the merits of the Rogers test in other contexts, the Court expressly rejected the Ninth Circuit’s holding that the use of a mark in a manner that includes other expressive content (e.g., parody communicating a humorous message) is automatically entitled to protection under the First Amendment. The Court determined that the Lanham Act’s likelihood of confusion analysis sufficiently balances the public interest in free expression and consumer interest in not being confused. Because VIP conceded it used the Bad Spaniels mark and trade dress as source identifiers for its own product, the only remaining question is likelihood of confusion. The Supreme Court vacated and remanded.
Coauthored by Joseph Dubis, Ph.D. and Mitchell Gross.