Case Briefs
Case(s): Jack Daniel’s Properties, Inc. v. VIP Products LLC, 22–148 (U.S.)
VIP Products makes a squeaky, chewable dog toy de- signed to look like a bottle of Jack Daniel’s whiskey. But not entirely. On the toy, for example, the words “Jack Daniel’s” become “Bad Spaniels.” And “Old No. 7 Brand Tennessee Sour Mash Whiskey” turns into “The Old No. 2 On Your Tennessee Carpet.”
District Court & Second Circuit Appeal
These jokes did not impress petitioner Jack Daniel’s Properties, which owns trademarks in the distinctive Jack Daniel’s bottle and in many of the words and graphics on its label. Soon after the Bad Spaniels toy hit the market, Jack Daniel’s demanded that VIP stop selling it. VIP filed suit, seeking a declaratory judgment that Bad Spaniels neither infringed nor diluted Jack Daniel’s trademarks. Jack Daniel’s counterclaimed for infringement and dilution.
At summary judgment, VIP argued that Jack Daniel’s infringement claim failed under the so-called Rogers test—a threshold test developed by the Second Circuit and designed to protect First Amendment interests in the trademark context. When “expressive works” are involved, VIP con- tended, that test requires dismissal of an infringement claim at the outset unless the complainant can show either (1) that the challenged use of a mark “has no artistic relevance to the underlying work” or (2) that it “explicitly misleads as to the source or the content of the work” Because Jack Daniel’s could not make that showing, VIP claimed, the Lanham Act’s statutory “likelihood of confusion” standard became irrelevant. And as for the dilution claim, VIP urged that Jack Daniel’s could not succeed because Bad Spaniels was a parody of Jack Daniel’s and therefore made “fair use” of its famous marks.
The District Court rejected both of VIP’s contentions for a common reason: because VIP had used the cribbed Jack Daniel’s features as trademarks—i.e., to identify the source of its own products. As the District Court saw it, when another’s trademark is used for “source identification,” Rogers does not apply, and instead the infringement suit turns on likelihood of confusion. The court likewise rejected VIP’s invocation of the fair-use exclusion, holding that parodies fall within that exclusion only when they do not use a famous mark to identify the source of the alleged diluter’s product. The case proceeded to a bench trial, where the District Court found 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.
On appeal, the U.S. Court of Appeals for the Ninth Circuit reversed. Finding the infringement claim subject to the threshold Rogers test, the Court of Appeals remanded the case to the District Court to decide whether Jack Daniel’s could satisfy either prong of that test. And the Court of Appeals awarded judgment on the dilution claim to VIP, holding that because Bad Spaniels parodies Jack Daniel’s, it falls under the “non-commercial use” exclusion. On remand, the District Court found that Jack Daniel’s could not satisfy either prong of Rogers, and granted summary judgment to VIP on infringement. The Court of Appeals summarily affirmed.
Supreme Court Opinion
The question before the Supreme Court was whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s likelihood-of-confusion analysis, or whether it is instead entitled to heightened First Amendment protection?
In an opinion by Justice Kagan on June 8, 2023, the court (9-0) held that “when an alleged infringer uses a trademark as a designation of source for the infringer’s own goods, the Rogers test does not apply.”