Trademark Infringement Is No Joking Matter: Supreme Court Reevaluates Parody Fair Use Exception and First Amendment’s Place in Trademark Infringement; Lexology, June 12, 2023

Atkinson Andelson Loya Ruud & Romo, Lexology ; Trademark Infringement Is No Joking Matter: Supreme Court Reevaluates Parody Fair Use Exception and First Amendment’s Place in Trademark Infringement

"In a unanimous 9-0 decision, the U.S. Supreme Court ruled that when a junior trademark user uses a parody of a famous trademark as an indicia of source for its own goods, the junior user cannot rely on the First Amendment to shield it from liability for trademark infringement for artistic or so-called “expressive works,” nor the parody exception to trademark dilution claims under the Lanham Act.

The Supreme Court’s June 8, 2023, decision in Jack Daniel’s Properties v. VIP Products vacated an earlier decision by the Ninth Circuit, which had ruled in favor of the junior trademark user that was selling a dog toy—“Bad Spaniels”— that parodied a Jack Daniel’s whiskey bottle. In ruling that the Rogers test, previously used to protect First Amendment interests and “fair use” in the trademark context, is not applicable when an infringer uses such mark as a source identifier—i.e., as a trademark—for its own goods, the Court clarified a significant point of contention in trademark law."