On June 8, 2023, a unanimous U.S. Supreme Court resolved the petition in Jack Daniel’s Properties, Inc. v. VIP Products LLC with two narrow holdings: (1) the threshold trademark infringement test espoused by the Second Circuit in Rogers v. Grimaldi for “expressive” works does not apply to allegedly infringing trademark use; and (2) humor and parody does not constitute “non-commercial use” within the meaning of the Lanham Act’s exclusion from liability for trademark dilution. In so doing, the Supreme Court reversed the Ninth Circuit’s ruling and remanded to the District Court, leaving questions about the continued viability of the Rogers test, as well as the bounds of the Lanham Act’s “non-commercial use” exclusion from dilution liability.
Origins of the Rogers Test
In Rogers v. Grimaldi, defendants produced and distributed a Fellini film titled Ginger and Fred about two fictional Italian cabaret dancers who imitated Ginger Rogers and Fred Astaire. Ginger Rogers objected to the use of her name, and the Second Circuit rejected her claim, reasoning that “artistic work” titles have an “expressive element” implicating “First Amendment values.” Because such names posed a relatively low risk of confusion, the Second Circuit crafted and applied a threshold test; if the title (1) had “at least some artistic relevance” to the mark, and (2) was not “explicitly misleading as to source or content,” then the claim could not go forward.
In 2013, VIP Products (VIP) introduced a rubber dog toy that parodies the well-known bottle design of the Jack Daniel’s whiskey bottle, e.g., by replacing “Old No. 7 Tennessee Sour Mash Whiskey” with “The Old No. 2 On Your Tennessee Carpet” on a square, whiskey bottle-shaped dog toy. In response to the objection by Jack Daniel’s, VIP sued for a declaratory judgment inter alia that the toy neither infringed nor diluted the Jack Daniel’s trademarks, and Jack Daniel’s counterclaimed for trademark infringement and dilution. The District Court refused to apply the Rogers test, and a jury found for Jack Daniel’s based in part on survey evidence supporting the conclusion that VIP Products’ dog toy created a likelihood of consumer confusion. On appeal, the Ninth Circuit reversed, remanding to the District Court with instructions to apply the Rogers test because VIP’s dog toy was an “expressive” work, and entering judgment for VIP on the dilution claim, reasoning that its dog toy is humorous and a parody and, as such, falls within the statutory “non-commercial use” exclusion from dilution liability.
The Supreme Court held that the Rogers test is not applicable to cases where a defendant is accused of an infringing trademark use; rather, if the Rogers test ever applies, it is only where a trademark is used in an expressive manner, e.g., a movie title. To illustrate the point, the Court cites the Mattel Inc. v. MCA Records, Inc. case; there, Mattel sued MCA Records over the song “Barbie Girl,” and the Ninth Circuit applied Rogers because “the band’s use of the Barbie name was ‘not as a source identifier,’ nor did it ‘speak to the song’s origin.’” The Court rejected the Ninth Circuit’s reasoning that, because VIP’s dog toy is a parody of the Jack Daniel’s whiskey bottle, it is expressive and thus entitled to the Rogers analysis. Instead, the Court found that VIP used the Jack Daniel’s bottle design as a trademark—as conceded in VIP’s complaint—and that because many trademarks have “expressive” value, the Ninth Circuit’s broad application of Rogers to any expressive mark would unduly expand Rogers and dwarf the likelihood of confusion analysis.
With regard to the dilution by tarnishment claim of Jack Daniel’s, the Supreme Court reversed the Ninth Circuit, finding that the “noncommercial use” exclusion cannot possibly include “every parody or humorous commentary,” otherwise the limitations on the Lanham Act’s fair use exclusion for parody would be meaningless.
Following the decision, questions remain. Does the Rogers test ever apply? The Court does not say, taking care to note that the decision is made “without deciding whether Rogers has merit in other contexts.” And although the decision is purportedly narrow, there is good reason to believe that Rogers is dead in at least some courts. For example, the U.S. Court of Appeals for the Sixth Circuit has adopted a minority view that trademark infringement can only arise from trademark use. Yet, if Rogers never applies to infringing trademark use, then it never applies at all. Questions also remain regarding the statutory exclusions from dilution liability, and what constitutes a non-commercial use. Notably, the Court expressly declined to take a position on the Ninth Circuit’s reasoning that “use of a mark may be ‘noncommercial’ even if used to sell a product.” Time will tell just how broad the implications of the Court’s narrow rulings truly are.