Who Let the Dogs In? How the Supreme Court Chewed Up Parody | Morrison & Foerster LLP
Can an alleged trademark infringer avoid the likelihood-of-confusion test by claiming its use is an “expressive work”? In Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. __ (2023), the Supreme Court recently rejected such a defense, holding that when a defendant uses another’s trademark as a source identifier for its own goods, the First Amendment offers no protection.
Background
VIP Products makes chewable dog toys that imitate the trade dress of liquor brands and display humorous names meant to evoke those brand names. Bad Spaniels is the name of one such toy, which is shaped like a Jack Daniel’s whiskey bottle and mirrors several of its well-known characteristics with comical tweaks such as “Old No. 2 On Your Tennessee Carpet” instead of “Old No. 7 Brand Tennessee Sour Mash Whiskey.” Not amused, Jack Daniel’s demanded that VIP cease all sales of the Bad Spaniels toy. VIP responded with a lawsuit seeking a declaratory judgment that it was not liable for infringement or dilution of Jack Daniel’s trademarks. Jack Daniel’s countersued with its affirmative claims.
On a motion for summary judgment, the district court rejected VIP’s arguments that the Bad Spaniels toy was a parody that deserved First Amendment protection as an “expressive work.” Under the Rogers v. Grimaldi test, when a trademark use qualifies as an “expressive work,” infringement cannot be found unless (1) the use of the mark “has no artistic relevance to the underlying work” or (2) the use of the mark “explicitly misleads as to the source of the content of the work.” Finding that Rogers did not apply because VIP used the asserted marks as a source identifier, the district court went on to apply the traditional likelihood-of-confusion test for infringement in a bench trial, and found VIP liable for both infringement and dilution. VIP appealed the decision to the Ninth Circuit.
Ninth Circuit Applies Rogers Test and Noncommercial Use Exclusion
On appeal, the Ninth Circuit reversed the district court’s ruling on the infringement claim, holding that VIP’s dog toy qualified as an “expressive work,” and thus the district court erred when it found likelihood of confusion without first applying the Rogers test. The Ninth Circuit remanded to the district court to decide the outcome under Rogers. On the dilution claim, it reversed the district court’s ruling on the merits altogether, finding that VIP’s use of the trademarks qualified for a “noncommercial use” exclusion because it was humorous commentary on Jack Daniel’s—even if such use facilitated VIP’s sale of its own products.
Supreme Court Clarifies the Applicability of the Rogers Test
In a unanimous decision authored by Justice Kagan, the Supreme Court reversed. Relying heavily on key tenets of trademark law, it 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. VIP’s use of the Jack Daniel’s trademarks thus was not entitled to “special First Amendment protection,” but instead, fell squarely within the “heartland of trademark law.”
With respect to the infringement claim, the Supreme Court emphasized that VIP’s use could not avoid the full scrutiny of the likelihood-of-confusion test because its Bad Spaniels trademark and trade dress were used to “distinguish [VIP’s] goods” and to “indicate [their] source.” To draw the line between uses that are source-identifying versus those that are not, the Court highlighted the Ninth Circuit’s decision in Mattel, Inc. v. MCA Records, Inc., which involved a dance-pop music group’s use of “Barbie” in the song “Barbie Girl.” There, the Ninth Circuit applied the Rogers test because it found the band’s use of the “Barbie” name was “not [as] a source identifier” and did not “speak [] to the [song’s] origin.” VIP could not establish the same for its own use. The Court reaffirmed that use of a trademark as a parody would be weighed within the likelihood-of-confusion test, but also clarified that it would not be grounds for skirting around the test entirely.
The Court’s ruling on the dilution claim was simpler: VIP’s use was commercial and therefore not shielded by the First Amendment. Justice Kagan succinctly outlined the Court’s view: “However wide the scope of the ‘noncommercial use’ exclusion, it cannot include, as the Ninth Circuit thought, every parody or humorous commentary.” Having also rejected the Ninth Circuit’s rationale for categorizing VIP’s product as an “expressive work,” the Court’s decision ends the dog days of predicting when the First Amendment would be applied by lower courts to similar cases.
Is Parody in the Doghouse?
Although the Supreme Court characterized its holding as “narrow,” its ramifications are broad for companies seeking to stop others from using their brands as a parody mark for their own goods. While the Court avoided discussing the merits of the Rogers test, it most likely has limited utility in trademark cases going forward, which will continue to require application of the likelihood-of-confusion test whenever the use at issue is “as a trademark.”
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