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For the full background, see our prior article, Can The Parody Defense Protect Against Trademark Infringement When The Use Is Commercial In Nature?
In a significant holding, the Supreme Court concluded that First Amendment protections cannot shield alleged infringers claiming their commercial use of another’s trademark is protected as a parody.
To recap, VIP Products’ sells dog toys as part of its “Silly Squeakers” line which consists of dog chew toys shaped like liquor bottles with parody names such as Dos Perros (Dos Equis), Smella Arpaw (Stella Artois), and Doggie Walker (Johnnie Walker).1 VIP’s “Bad Spaniels” dog toy parodies Jack Daniel’s most popular product, Tennessee Whiskey No. 7:
The primary issue in this case was whether the Second Circuit’s test established in Rogers v. Grimaldi, applied such that First Amendment protections prevented application of the Lanham Act’s likelihood of confusion analysis to determine trademark infringement claims. Under the Rogers test, an expressive work is protected under the First Amendment if it is: (i) artistically relevant; and (ii) not explicitly misleading.2
The lower courts disagreed whether First Amendment protections applied to VIP’s commercial use of the Bad Spaniels mark.
First, the District Court refused to apply the Rogers test to such commercial use noting that Rogers did not apply where the alleged infringer used the other party’s mark as a trademark itself, i.e., to identify the source of its own products.3 Following a bench trial in which the District Court applied the Lanham Act’s likelihood of confusion factors, the court held VIP’s use constituted trademark infringement.4
However, the Ninth Circuit held that while the dog toy was “surely not the equivalent of the Mona Lisa,” its humorous message was sufficient expressive content to be protected under the First Amendment.5 Moreover, the court held that expressive content is “not rendered non-expressive simply because [the product] is sold commercially.”6 As such, the Ninth Circuit remanded the case for the application of the Rogers test to determine whether VIP’s use constituted trademark infringement.
On remand, the District court held that Jack Daniel’s could not satisfy either prong of the Rogers test, and granted summary judgment to VIP on the issue of infringement.7 The Ninth Circuit summarily affirmed and the Supreme Court subsequently granted certiorari.8
Settling the question that has plagued numerous trademark owners, the Supreme Court held that the Rogers exclusion of Lanham Act liability as applied to expressive works (such as a parody), does not apply when the expressive work itself functions as a trademark.9 In other words, the alleged infringer cannot invoke First Amendment protections to avoid claims of trademark infringement or dilution when the use at issue is commercial in nature. Thus, the Court vacated and remanded the Ninth Circuit’s decision to determine whether VIP’s use is likely to cause confusion with Jack Daniel’s.
Notably, the Court chose to keep its opinion narrow and opted “not [to] decide whether the Rogers test is ever appropriate, or how far the ‘noncommercial use’ exclusion goes.”10 While Rogers lives on, Justice Gorsuch’s concurring opinion, joined by Justices Thomas and Barret, noted that “[t]he lower courts should handle Rogers…with care” and the unresolved questions regarding the correctness of Rogers “remain for resolution another day.”11
Thus, while the Court’s holding has cleared up one issue, it may raise additional questions regarding the future application of Rogers and First Amendment protections against claims of trademark infringement in other cases.
Beyond the dog toys at issue here, this case will impact any satirical or parodical use of another’s mark on goods being offered for sale by business owners, on e-commerce websites, and by influencers. Accordingly, this decision is a win for brand owners as a means to police and protect their marks from such use.