The recent Supreme Court decision in Jack Daniels Properties Inc. v. VIP Products LLC, may have lasting impacts on trademark adoption and enforcement strategies of brand owners and businesses. VIP Products, which sells dog toys, created a dog toy that looked remarkably similar to a bottle of Jack Daniel’s Whiskey.  Jack Daniel’s sued VIP for infringement of their trade dress and trademark rights. The Supreme Court limited the applicability of the Rogers test in such cases. Companies that produce goods that may utilize a third party’s trademark should consider this new standard and the risks associated with any use of another’s trademark. Brand owners should not only consider the legal strength of an infringement claim but also the public perception such a claim impart on their brand and business.

The Rogers Test and Its Impact on the Case 

What do Ginger Rogers, dog toys, Jack Daniel’s Whiskey, and Barbie all have in common? They help us to determine when 1st amendment rights and parodies can be protected against trademark infringement claims. Let’s start with the standard that has been applied to these types of cases: The Rogers Test.

The Rogers test was established by the 2nd Circuit in Rogers v Grimaldi in 1989. The actress Ginger Rogers sued Grimaldi for making the film “Ginger and Fred” as a satire of Rogers and Fred Astaire. She claimed false advertising and that the movie implied Rogers was involved with the film. In its decision, the 2nd Circuit established the Rogers test for expressive works instead of applying a likelihood of confusion test. The two prongs of the test consider:

• Whether the use of another’s trademark has some artistic relevance to the underlying work; and 
• Whether the use is explicitly misleading as to the source of the content of the work.

Applying this standard, the 2nd Circuit found there was no infringement by Grimaldi. Not all Circuit Courts have applied the Rogers test similarly when determining if a work is expressive or explicitly misleading.

How the Supreme Court Determined The Verdict 

The recent Supreme Court decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC addresses circumstances where the Rogers test may not be applicable. 

This case has been ongoing since 2014 when VIP Products filed for a declaratory judgment that its toy did not infringe on Jack Daniel’s trademark. In 2018, the US District Court in Arizona found the toy infringed on Jack Daniel’s trademark and trade dress rights and diluted their marks through tarnishment. VIP Products was forbidden from making or selling the toy.

In 2020, the Ninth Circuit reversed, finding the Rogers test applicable because the dog toy was expressive and communicated a humorous message, even though it was a commercial product. Under Rogers, the Ninth Circuit found VIP Products’ use of the marks to be expressive and noncommercial.

In 2023, in a unanimous decision, the Supreme Court found that the Rogers test does not apply when an infringer is using the mark as a source identifier – where a defendant may be trading on the trademark owner’s goodwill to market its own goods. The Ninth Circuit decision was vacated, and the case was remanded. The Ninth Circuit’s position that communication of a humorous message automatically entitles an alleged infringer to Rogers’ protection was rejected. As of February 2024, the dog toys are still available for purchase at Amazon and various other websites. 

How This Case Related to Others – Mattel vs. MCA Records

We can look to another case to highlight the difference in outcome in the Jack Daniels’ case. In 1997, Mattel sued MCA Records for violating their Barbie copyrights and trademarks in the “Barbie Girl” song by the group Aqua. The case was dismissed, and the Ninth Circuit, which applied the Rogers test, found the song was a parody under the trademark doctrine of nominative use and the 1st amendment.

Some of the arguments in the Mattel case are similar to those used by Jack Daniels. Mattel argued that Aqua’s song damaged Barbie’s reputation.  Jack Daniels’ argued that the dog toy tarnished its reputation. In both cases, it was unlikely that anyone believed the Aqua song or the dog toy was associated with Mattel or Jack Daniels. The main reasons for the different outcomes in both cases are:

• VIP Products used the Jack Daniels trademarks and trademark dress as source identifiers for the dog toy.
• In Mattel, the song was not being used as a source identifier, as it was well-known that the artist behind the song was Aqua.

The Implications For Businesses and Brand Owners

The Jack Daniels’ decision may have some effects on businesses and brand owners. For example, businesses who expressively use a 3rd party mark should not rely on the 1st amendment and the Rogers test as a defense or shield from liability. Businesses should conduct a review of their use and consider the following: 

• The type of use – Is it commercial or artistic? 
• Does the use serve as a source identifier for their own goods or services?

Brand Owners should revise any of their policing and enforcement strategies as per the Supreme Court’s decision. There may now be recourse for expressive uses of their trademark rights where Rogers may not be applicable.

Public relations considerations are important when deciding how to approach the use of trademarks that may be infringing. Before commencing a suit or taking another legal action, business owners may wish to consider public opinions and any unintended benefits to the infringer. Consider public backlash – business owners should consider public perception and see if there is an alternative creative way to address the matter that will portray them in a favorable light to the public. The general public needs to understand the nuances of trademark law and will come to their conclusions. The court of public opinion can be significantly shifted by how you approach as a trademark owner.

Brand owners should also consider any potential unintended benefits to the infringing party. If your trademark is being used in a parody or in satire, it is likely that the mark is already relatively well-known, likely more than the infringer. It is possible that a lawsuit would shine a spotlight on the infringer’s product or service and bring an unintended benefit. For example, comments left on an Amazon listing for the Bad Spaniels toy supported VIP Products and several commenters stated they bought the dog toy after hearing about the case. Brand owners facing a situation similar to Jack Daniels may have a strong case but should always consider the PR effects a lawsuit may have, even if successful, on their brand.

Key Takeaways From the Supreme Court’s Decision

There are two key takeaways from the Supreme Court’s decision and how this case has played out. 

1. The Supreme Court has limited the applicability of the Rogers Test in cases where a third party’s trademark is being used as a source identifier for another party’s product or service, even when the use is an artistic expression.
2. Brand owners should consider the legal strength of an infringement claim and any potential effects on public relations with their brand and the third-party infringer.

Watch the full presentation on NAMWOLF – “Bad Spaniels: Free Speech and Parodies v. Trademark Protection” – December 2023 Hot Topic presented by Kristin Grant & Sejal Rajan of Grant Attorneys at Law PLLC.