On June 8, 2023, the Supreme Court unanimously decided the trademark parody, Jack Daniel’s Properties, Inc. v. VIP Products LLC. (hereinafter “Slip Op.”). The Court held that using a senior user’s trademark as a trademark on a parody product does not implicate First Amendment concerns. Rather, parody comes into play only if the parody causes consumers not to be likely confused as to sponsorship or source of the parody paroduct.
Justice Kagan summarized her opinion :
This case is about dog toys and whiskey, two items seldom appearing in the same sentence. Respondent VIP Products makes a squeaky, chewable dog toy designed to look like a bottle of Jack Daniel’s whiskey. Though not entirely. On the toy, for example, the words “Jack Daniel’s” become “Bad Spaniels.” And the descriptive phrase “Old No. 7 Brand Tennessee Sour Mash Whiskey” turns into “The Old No. 2 On Your Tennessee Carpet.” The jokes did not impress petitioner Jack Daniel’s Properties. It owns trademarks in the distinctive Jack Daniel’s bottle and in many of the words and graphics on the label. And it believed Bad Spaniels had both infringed and diluted those trademarks. Slip Op. at 1.
Justice Kagan explained that
the Court of Appeals [for the Ninth Circuit], in the decision we review, saw things differently. Though the federal trademark statute makes infringement turn on the likelihood of consumer confusion, the Court of Appeals never got to that issue. In the court’s view, the First Amendment compels a stringent threshold test when an infringement suit challenges a so-called expressive work — here (so said the court), the Bad Spaniels toy. And that test knocked out Jack Daniel’s claim, whatever the likelihood of confusion. Likewise, Jack’s dilution claim failed—though on that issue the problem was statutory. The trademark law provides that the “noncommercial” use of a mark cannot count as dilution. 15 U. S. C. §1125(c)(3)(C). The Bad Spaniels marks, the court held, fell within that exemption because the toy communicated a message—a kind of parody—about Jack Daniel’s.
Today, we reject both conclusions. The infringement issue is the more substantial. In addressing it, we do not decide whether the threshold inquiry applied in the Court of Appeals is ever warranted. We hold only that it is not appropriate when the accused infringer has used a trademark to designate the source of its own goods—in other words, has used a trademark as a trademark. That kind of use falls within the heartland of trademark law, and does not receive special First Amendment protection. The dilution issue is more simply addressed. The use of a mark does not count as noncommercial just because it parodies, or otherwise comments on, another’s products. Id. at 1-2.
The Ninth Circuit relied on Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Jack Daniel’s, however, argued that “[u]nder Rogers, an expressive work is allowed to confuse as long as the use of a mark is artistically relevant and not explicitly misleading. [Yet] parodies can be confusing … [meaning] pervasive copying and trading off a brand’s goodwill [that] tends to confuse will get a Lanham Act pass under Rogers.”
Justice Kagan distinguished Rogers as follows:
a film by Federico Fellini titled ‘Ginger and Fred’ about two fictional Italian cabaret dancers who imitated Ginger Rogers and Fred Astaire. When the film was released in the United States, Ginger Rogers objected under the Lanham Act to the use of her name. The Second Circuit rejected the claim. It reasoned that the titles of ‘artistic works,’ like the works themselves, have an ‘expressive element’ implicating ‘First Amendment values.’ And at the same time, such names posed only a ‘slight risk’ of confusing consumers about either ‘the source or the content of the work.’ So, the court concluded, a threshold filter was appropriate. … But the court made clear that it was not announcing a general rule. In the typical case, the court thought, the name of a product was more likely to indicate its source, and to be taken by consumers in just that way. Slip Op. at 11.
Again, Justice Kagan further explained
In this case, by contrast, the Court found that Rogers was not invoked, because an alleged infringer use[d] a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer’s own goods. VIP used the marks derived from Jack Daniel’s in that way, so the infringement claim here rises or falls on likelihood of confusion. Rogers only kicks in when a suit involves solely ‘nontrademark uses of [a] mark—that is, where the trademark is not being used to indicate the source or origin’ of a product, but only to convey a different kind of message. … If we put this case to the side, the Rogers test has applied only to cases involving ‘non-trademark uses’—or otherwise said, cases in which ‘the defendant has used the mark’ at issue in a ‘non-source-identifying way.’” Id. at 11, 13 (internal citations omitted).
On the contrary, in this case, Justice Kagan noted that “VIP uses its Bad Spaniels trademark and trade dress as source identifiers of its dog toy,” by reasoning that “[w]hen … the use is ‘at least in part’ for ‘source identification’ — when the defendant may be ‘trading on the good will of the trademark owner to market its own goods’ — Rogers has no proper role. And that is so … even if the defendant is also ‘making an expressive comment,’ including a parody of a different product. The defendant is still ‘mak[ing] trademark use of another’s mark,’ and must meet an infringement claim on the usual battleground of ‘likelihood of confusion.’’ Slip Op. at 14.
The Court did not take a position on Rogers, but rather labeled it a “cabined doctrine.” Id. at 13. “Over the decades, the lower courts adopting Rogers have confined it to similar cases, in which a trademark is used not to designate a work’s source, but solely to perform some other expressive function.” Id. at 11.
With the only question remaining being “whether the Bad Spaniels marks are likely to cause confusion,” the Court remanded the case on VIP’s asserted defense to infringement, namely, that its product’s “expressive message—particularly a parodic one,” refuted a likelihood of confusion. “Yet to succeed, the parody must also create contrasts, so that its message of ridicule or pointed humor comes clear. And once that is done (if that is done), a parody is not often likely to create confusion. Self-deprecation is one thing; self-mockery far less ordinary. So although VIP’s effort to ridicule Jack Daniel’s does not justify use of the Rogers test, it may make a difference in the standard trademark analysis. Consistent with our ordinary practice, we remand that issue to the courts below.” Slip Op. at 18-19.
On the dilution by tarnishment issue, the Court rejected the Ninth Circuit’s view that parodies are “non-commercial uses” even when used to sell a product. Id. at 19. The Supreme Court noted that “[h]owever wide the scope of the ‘noncommercial use’ exclusion, it cannot include, as the Ninth Circuit thought, every parody or humorous commentary.” Id.
In closing, the Court concluded,
Today’s opinion is narrow. We do not decide whether the Rogers test is ever appropriate, or how far the “noncommercial use” exclusion goes. On infringement, we hold only that Rogers does not apply when the challenged use of a mark is as a mark. On dilution, we hold only that the noncommercial exclusion does not shield parody or other commentary when its use of a mark is similarly source-identifying. It is no coincidence that both our holdings turn on whether the use of a mark is serving a source-designation function. The Lanham Act makes that fact crucial, in its effort to ensure that consumers can tell where goods come from. Slip Op. at 20.
Justice Sotomayor’s concurring opinion, joined by Justice Alito, addressed the use of surveys in “in the context of parodies and potentially other uses implicating First Amendment concerns,” cautioning that “[a]llowing such survey results to drive the infringement analysis would risk silencing a great many parodies, even ones that by other metrics are unlikely to result in the confusion about sourcing that is the core concern of the Lanham Act.” Sotomayor Concurrence at 1, 2.
Justice Gorsuch also concurred, joined by Justices Thomas and Barrett, relating to the Rogers test:
Today, the Court rightly concludes that, even taken on its own terms, Rogers does not apply to cases like the one before us. But in doing so, we necessarily leave much about Rogers unaddressed. For example, it is not entirely clear where the Rogers test comes from—is it commanded by the First Amendment, or is it merely gloss on the Lanham Act, perhaps inspired by constitutional-avoidance doctrine? For another thing, it is not obvious that Rogers is correct in all its particulars—certainly, the Solicitor General raises serious questions about the decision. All this remains for resolution another day, and lower courts should be attuned to that fact. Gorsuch Concurrence at 1.
VIP’s parody is remanded to the Ninth Circuit. Parodists will need to focus on lack of likelihood of confusion in the future.
No posts
Comments
Nothing yet. Say the first thing.
Sign in to join the conversation.