Under Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), the First Amendment may preclude an infringement claim against an “expressive work” unless the accused use is either (1) not artistically relevant to the underlying work or (2) explicitly misleads consumers as to the source or content of the work. See also Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002) (adopting the Rogers test).
In VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1174 (9th Cir. 2020), the Ninth Circuit held that a trademark infringement claim was subject to the threshold Rogers test because the accused product was an “expressive work.” Specifically, VIP sold a chew toy called Bad Spaniels that was in the shape of a Jack Daniel’s bottle. The Ninth Circuit noted that, although just a dog toy, and “surely not the equivalent of the Mona Lisa,” it nonetheless “communicates a humorous message.” Id. at 1175 (internal quotation marks omitted).
In a unanimous decision written by Justice Kagan, the U.S. Supreme Court held that the Rogers test affirmed in Jack Daniel’s Properties, Inc. v. VIP Products, LLC, No. 21-148, — U.S. — (June 8, 2023), that a party does not need to satisfy the Rogers threshold test when the expressive work is used as a source-identifier.
Without deciding whether Rogers has merit in other contexts, we hold that it does not when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer’s own goods. See §1127; supra, at 2–3. VIP used the marks derived from Jack Daniel’s in that way, so the infringement claim here rises or falls on likelihood of confusion. But that inquiry is not blind to the expressive aspect of the Bad Spaniels toy that the Ninth Circuit highlighted. Beyond source designation, VIP uses the marks at issue in an effort to “parody” or “make fun” of Jack Daniel’s. Tr. of Oral Arg. 58, 66. And that kind of message matters in assessing confusion because consumers are not so likely to think that the maker of a mocked product is itself doing the mocking.
Here, VIP had conceded that it used the Bad Spaniels trademark and trade dress as source identifiers. Indeed, in its pleadings, VIP alleged that it both “own[s] and “use[s]” the “‘Bad Spaniels’ trademark and trade dress for its durable rubber squeaky novelty dog toy.” Accordingly, the Rogers threshold test did not apply.
The Court expressly stated that this was a “narrow” decision, noting that the Rogers test was a “cabined doctrine” confined to cases “in which a trademark is used not to designate a work’s source, but solely to perform some other expressive function.” As an example, the Court cited Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), where a music band’s use of the Barbie name in a song was did not “speak[] to [the song’s] origin.” Id. at 902 (a consumer would no more think that the song was “produced by Mattel” than would, “upon hearing Janis Joplin croon ‘Oh Lord, won’t you buy me a Mercedes Benz?,’ . . . suspect that she and the carmaker had entered into a joint venture”).
So, the issue was whether or not the Bad Spaniels marks are likely to cause confusion. But the parody defense was still relevant to the infringement analysis.
[T]o succeed, the parody must also create contrasts, so that its message of ridicule or pointed humor comes clear. And once that is done (if that is done), a parody is not often likely to create confusion. Self-deprecation is one thing; self-mockery far less ordinary. So although VIP’s effort to ridicule Jack Daniel’s does not justify use of the Rogers test, it may make a difference in the standard trademark analysis.
With respect to trademark dilution, the Court noted that the statute’s fair-use exclusion for parody has its own exclusion: It does not apply when the use is “as a designation of source for the person’s own goods or services.” 15 U.S.C. § 1125(c)(3)(A).
Today’s opinion is narrow. We do not decide whether the Rogers test is ever appropriate, or how far the “noncommercial use” exclusion goes. On infringement, we hold only that Rogers does not apply when the challenged use of a mark is as a mark. On dilution, we hold only that the noncommercial exclusion does not shield parody or other commentary when its use of a mark is similarly source-identifying. It is no coincidence that both our holdings turn on whether the use of a mark is serving a source-designation function. The Lanham Act makes that fact crucial, in its effort to ensure that consumers can tell where goods come from.
In a concurrence by Justice Sotomayor, she wrote that, “in the context of parodies and potentially other uses implicating First Amendment concerns, courts should treat the results of surveys with particular caution.”
In another concurrence written by Justice Gorsuch, he wrote to underscore that lower courts should handle the Rogers test “with care.”
The attorneys at Thomas P. Howard, LLC litigate trademark cases nationwide including in Colorado.