Introduction

The U.S. Supreme Court provided clarification on the application of the Rogers test in relation to Jack Daniels v. VIP Products. Scott Hervey and Jamie Lincenberg talk about this ruling on this episode of The Briefing by the IP Law Blog.

Watch this episode on the Weintraub YouTube channel here.

Show Notes:

Scott:
In the case of Jack Daniel’s Properties, Inc. v. VIP Products, the Supreme Court has spoken and provided clarification on the application of the Rogers test and whether the parodic use of another’s trademark is always non-commercial use for the purposes of a dilution claim. We are going to talk about this ruling and its potential future applications on this installment of the Briefing by WT.

I am Scott Hervey of Weintraub Tobin, and I am joined today by my colleague, Jamie Lincenberg. Jamie, welcome to the briefing.

Scott:
On June 8, 2023, the United States Supreme Court handed down its opinion in JACK DANIEL’S PROPERTIES, INC. v. VIP PRODUCTS. The dispute dates back to 2014 when Jack Daniel’s sent a series of cease and desist letters to VIP products concerning its squeaky dog chew toy, Bad Spaniels. This toy parodies the Jack Daniel’s product;  “Jack Daniel’s” becomes “Bad Spaniels.” And the phrase “Old No. 7 Brand Tennessee Sour Mash Whiskey” turns into “The Old No. 2 On Your Tennessee Carpet.” Jack Dailes claimed that VIP Products had infringed and diluted its trademarks. In 2018 a district court judge ruled in Jack Daniels’s favor.

Jamie:
In its ruling on a motion for summary judgment, the district court held that the Rogers test, which is used to balance the interests between trademark law and the First Amendment, was inapplicable because the toy is not an expressive work. Later, after a four-day bench trial, the District Court ruled against VIP Products and found it had infringed Jack Daniel’s marks.

Scott:
On appeal to the Ninth Circuit, VIP argued that the district court erred in finding that the toy wasn’t expressive. The Ninth Circuit, therefore, remanded the matter to the district court to apply the Rogers test, which requires the mark holder to show the putative infringer’s use of the mark either (1) is “not artistically relevant to the underlying work” or (2) “explicitly misleads consumers as to the sources or content of the work.

Jamie:
In reviewing the Ninth Circuit’s holding, the Supreme Court framed its analysis by starting its opinion with a discussion of the purpose and function of a trademark, which is to serve as an identifier of the source of certain goods and services. From there, the Court then looks at the Ninth Circuit’s application of the Rogers test and its analysis of Jack Daniels’ dilution claim.

Scott:
Right. With regard to the application of the Rogers test, the Supreme Court said the issue is not whether the dog toy is an expressive work. The issue is the nature of the use of Jack Daniel’s marks. The Supreme Court found that VIP’s use of the marks, while humorous, was for the purpose of serving as a source identifier…trademark use, in other words. That didn’t seem to be a controversial analysis since, in its complaint, VIP claimed trademark rights in Bad Spaniels, and VIP had, in fact, secured trademark registration of Bad Spaniels. This use, use as a trademark, is outside of the application of the Rogers test and instead should be analyzed under the multi-factor test like Sleekcraft.

Jamie:
The Supreme Court said that this approach….confining Rogers to instances where a trademark is not used to designate a work’s source but solely to perform some other expressive function….. is not new and has been followed by lower courts in other cases.

Scott:
That’s an important point you raise. The use of the trademark must only be to perform some other expressive function. Where a mark is used both to perform an expressive function and also as a source identifier, the Rogers test is not applicable.

Jamie:
Scott, do you think the Court’s analysis would have been different if VIP had not claimed trademark rights in Bad Spaniels?

Scott:
That certainly gave the Supreme Court an easy out. The Supreme Court said that the lower Court got it right when it said that “VIP uses its Bad Spaniels trademark and trade dress as source identifiers of its dog toy,” and the Supreme Court said that this point was conceded by VIP when it said in its complaint that it both owns and uses the Bad Spaniels trademark and trade dress for its dog toy. For certain, the Supreme Court points to some other factors, but this seems to be the proverbial nail in the coffin.

Jamie:
Continuing with this hypothetical, what if VIP didn’t claim that Bad Spaniels was a trademark, didn’t treat it as a product name, and rather claimed that its use was merely humorous and ornamental and not any form of trademark use?

Scott:
That probably would have helped. It’s certain from this opinion that this threshold analysis of whether the use is trademark use, even if it’s parodic or humorous, is going to be case by case.

Jamie:
The Supreme Court engaged in a similar analysis in its treatment of Jack Daniel’s claim of dilution by tarnishment. The Ninth Circuit had dismissed that claim based on the Lanham Act’s exclusion from liability for dilution for any non-commercial use of a mark, and VIP’s parodic use constituted non-commercial use.

Scott:
The Supreme Court took issue with that. It said that not every parody or humorous commentary is a non-commercial use and that use as a designation of source for the person’s own goods or services, even if a parody or humorous commentary, is not a non-commercial use.

Jamie:
Scott, I know that you regularly look to the Rogers test for guidance with your creative clients who may include third-party brands in their programs. How do you think this case will impact them?

Scott:
Good question. As a threshold matter in determining whether Rogers applies, we will ask, is this use trademark use….are we using it as a source identifier? For example, where a production company films a character getting out of a Ferrari and where that’s done to establish some characteristic about that character (for example, rich, stylish, risk taker), that’s not going to be source identifier use, As such, we will just apply the Rogers test, where this case will present issues for companies that build a business around poking fun at or commenting at other brands.