Supreme Court Sides with Jack Daniel’s in Trademark CaseBy Jennifer E. Rothman
June 8, 2023
Today's Supreme Court decision in Jack Daniel’s Properties, Inc. v. VIP Products, 599 U.S. __ (2023), will influence not only trademark cases to come, but also false endorsement and right of publicity cases.
As you may already know, the case involved a dog toy that mocked the name and trade dress of Jack Daniel's iconic whiskey bottle. The Ninth Circuit applied what is known as the Rogers test to hold that the use of Jack Daniel's name and trade dress was expressive, the use artistically relevant, and "not explicitly misleading as to source or content." Accordingly, the appellate court rejected both infringement and dilution claims against VIP Products, the dog toy company.
The Supreme Court reversed and remanded the case, holding that the Rogers test was not applicable to the sort of use made of the Jack Daniel's trade dress and mark because the defendant VIP Products used them as marks for its own product. Thus, the Court limited the applicability of the Rogers test to uses that are not as a mark. The Court emphasized that its holding was "narrow" and that it did not decide the question of "whether Rogers has merit in other contexts." It solely held "that [Rogers does not have merit] 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." Slip Op. at 10.
The decision was far more modest than predicted. It did not broadly strike down Rogers. It did not get into the thorny area of what counts as artistic expression or an expressive work. The Court left in place (without deciding) the Rogers test but limited its applicability to instances in which a defendant does not use the plaintiff’s mark as a mark for its own products or services. The Court was wise to make such a narrow ruling, one that will likely lead the creative industries, particularly the film industry, to breathe a sigh of relief.
Many questions, however, are left on the table both generally for trademark law and specifically for this case on remand.
Questions on Remand
There was a bench trial below and it is not clear whether the opinion limits, on remand, the validity of the prior findings of infringement and dilution. A concurring opinion by Justice Sotomayor calls into question the legitimacy of survey evidence and suggests a much more skeptical and discerning review of such surveys, including criticisms of those submitted in this case.
The opinion by Justice Kagan also potentially narrows the scope of the infringement and dilution analysis to something less than the overall configuration of the toy, and highlights that the parodic nature of the use should weigh heavily against an infringement finding (and perhaps against dilution too, at least by blurring). The Court cited favorably a 4th Circuit case involving another dog toy in which likely confusion and dilution were rejected on the basis that a parody of a famous fashion brand’s name weighed against both. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). Given the increased importance of whether a defendant's use is as a mark, one wonders if VIP, on remand, will have an opportunity to narrow what is considered to be its trademark uses. For example, could VIP challenge on remand whether its dog toy uses the bottle shape as a mark for its own product or instead contend that only the name (Bad Spaniels) and its logo are source-identifiers subject to the Supreme Court's analysis and subsequent infringement and dilution analysis?
Questions for Trademark Law
For trademark law more broadly, some open questions remain. The opinion is vague on what counts as use as a mark or whether this is a requirement for liability. At the same time, this inquiry into what counts as a trademark use has become more important as a fundamental inquiry in trademark cases. As the example above involving this case on remand suggests.
Also consider what happens under the Court's analysis to titles of works when they are part of a series of works and therefore eligible for treatment as source-identifiers? Look at the facts of Rogers v. Grimaldi which the Court cites favorably and distinguishes from the case before it. The movie title involved in Rogers, Ginger and Fred, is a single movie title, but if it were a TV series it would have been eligible for registration and treatment as a mark. Does this mean under the logic of the opinion that it would not have been appropriate to analyze the movie title under the Rogers test if it were a series?
The focus on trademark use in the opinion is notable and may lead some to think it is now a requirement for finding infringement that a defendant uses another’s mark (or something similar) as a mark for their own products or services in order for there to be liability. I do not think the Court meant to limit the law in this way. Instead, I think the Court meant to distinguish infringement and dilution analyses involving defendants that use another’s mark (or something similar) as a mark for their own products or services from those in which defendants do not do so. I therefore think the Court left in place the possibility of false endorsement and false sponsorship claims arising out of uses that are not “trademark uses”—these are the circumstances raised by the facts of the Rogers case itself and also in the cited “Barbie Girl” case brought by Mattel in which the Rogers test was employed to reject infringement claims. The fact that the Court highlighted these examples suggests that the justices think such "uses" fall within the scope of potential infringement, false endorsement, and (perhaps) dilution claims. (I note that the different language in the current version of federal dilution law suggests a use as a mark must be made for liability to attach for diliution, see 15 U.S.C. 1125(c) (Lanham Act Section 43(c))
First Amendment and Trademark Law
Supporters of the Rogers test should not be overly confident in the test's longevity. The court did not affirm its validity nor suggest whether is a doctrine internal to trademark law, or part of an independent First Amendment analysis, and Gorsuch’s concurring opinion (signed on to by Justices Thomas and Barrett) highlights this and goes a step further to destabilize the test entirely. In his concurrence, Gorsuch suggests that “serious questions” remain about whether the Rogers test is valid in any context and warns “lower courts to be attuned to that fact.” Concurrence, p. 1.
From a broader First Amendment perspective, the opinion notably concludes that if a defendant uses a plaintiff’s mark (or something similar) as its own mark, then the likelihood of confusion analysis itself “does enough work to account for the interest in free expression.” Slip Op. at 17. No other First Amendment review is required. This again makes a lot of speech-protective work turn on whether a use is categorized as a mark or not.
Implications for Vidal v. Elster
The Jack Daniel’s decision will also have implications for the recently granted cert. petition in Vidal v. Elster. Elster involves a First Amendment challenge to the trademark registration bar under 2(c) when a mark “consists of or comprises a name, portrait, or signature” of another person without that person's permission. This bar notably does not require a showing of likely confusion that the person whose identity is used is the source of the product or has sponsored the product. The decision in Jack Daniel’s will also be relevant to Elster because the sought-after registration involves a parodic use of another’s identity—here former President Trump’s—as the intent-to-use application seeks to register a mark in “Trump Too Small” for use on t-shirts and other apparel.
First Amendment Implications for Right of Publicity Cases
The continued (at least for now) life of the Rogers test also has relevance in some right of publicity cases, at least in jurisdictions (like the 2d Circuit) that have adopted a similar test for evaluating First Amendment defenses to right of publicity (and appropriation) claims. And the Rogers test will remain relevant (for now) in false endorsement cases under the Lanham Act.
In the short term, courts are likely to continue to employ Rogers outside of commercial product uses. In the longer term, be prepared for the uncertainty of how to evaluate what are nontrademark uses versus trademark uses to launch (and extend) much future litigation in this area and for Rogers to be challenged again and perhaps abandoned in some circuits.