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."

US Supreme Court rules for Jack Daniel's in fight over parody dog toy; Reuters, June 8, 2023

 John Kruzel and Andrew Chung, Reuters; US Supreme Court rules for Jack Daniel's in fight over parody dog toy

"The 9-0 decision authored by liberal Justice Elena Kagan threw out a lower court's ruling that the pun-laden "Bad Spaniels" vinyl chew toy sold by VIP Products LLC is an "expressive work" protected by the U.S. Constitution's First Amendment. Jack Daniel's Properties Inc is owned by Louisville, Kentucky-based Brown-Forman Corp (BFb.N)...

Lower courts had ruled in favor of VIP Products after applying what is called the Rogers test, which has allowed artists to lawfully use another's trademark when doing so has artistic relevance to their work and would not explicitly mislead consumers about its source.

The test was crafted in a 1989 decision by the New York-based 2nd U.S. Circuit Court of Appeals in a case brought by Hollywood legend Ginger Rogers. The actress unsuccessfully sued to block the 1986 film "Ginger and Fred" from director Federico Fellini that referred to her famed dance partnership with actor Fred Astaire."

Jack Daniel's tells Supreme Court its brand is harmed by dog toy Bad Spaniels; NPR, March 22, 2023

Nina Totenberg, NPR ; Jack Daniel's tells Supreme Court its brand is harmed by dog toy Bad Spaniels

"This case involves the federal trademark statutes and whether and when parody is protected speech. The whiskey company claims that the imitation Bad Spaniels bottle has appropriated the iconic Jack Daniel's design for just one purpose, to sell a chewy dog toy. And by doing that, the company claims, Jack's property rights have been infringed, even if the chewy dog toy is expressive."

Bad Spaniel's: barking the line between permitted parody and trademark infringement; Reuters, February 15, 2023

Deirdre M. Wells, William H. Milliken, and Kristina Caggiano Kelly, Reuters; Bad Spaniel's: barking the line between permitted parody and trademark infringement

"The 9th Circuit ultimately vacated the district court's judgment on trademark infringement, based on the two-part Rogers test. The Rogers test was established in the 1989 2nd U.S. Circuit Court of Appeals decision in Rogers v. Grimaldi, and balances trademark and free speech rights. Under this test, a trademark can be used without authorization as long as it meets a minimal level of artistic expression and does not explicitly mislead consumers.

To overcome VIP's First Amendment right to humorous expression, Jack Daniel's was required to show that VIP's use of its trademarks is either (1) not artistically relevant to the underlying work, or (2) explicitly misleads consumers as to the source or content of the work. The trial court did not apply the Rogers test as part of its analysis...

The 9th Circuit's application of the Rogers test — which has traditionally been used for expressive works like movies, music, and books — to the commercial setting has garnered the attention of attorneys and brand owners alike. The outcome of this case has far-reaching implications for gag gifts, novelty T-shirts, and even subtler fashion products."

Trademarks in the metaverse — artistic expression or commercial product?; Reuters, January 5, 2023

Dorothy R. Auth

, Howard Wizenfeld

 and A.J. Harris

, Reuters; Trademarks in the metaverse — artistic expression or commercial product?

"While the Rogers decision was initially limited to movie titles, courts have variously expanded its application to books, songs, video games, and even commercial items such as dog toys, with particular expansion occurring in the 9th U.S. Circuit Court of Appeals. The extent of its scope is now at issue at the U.S. Supreme Court. While virtual goods present issues different from physical goods, how courts determine the metes and bounds of the Rogers test will be determinative of how NFTs are analyzed."

Here’s How the Supreme Court Could Impact Creative Trademark Use; Bloomberg Law, December 29, 2022

Dorothy Auth, Cadwalader, Wickersham & Taft, Howard Wizenfeld, Cadwalader, Wickersham & Taft, Bloomberg Law; Here’s How the Supreme Court Could Impact Creative Trademark Use

"The upcoming term for the US Supreme Court includes an ambitious schedule of intellectual property cases, spanning patent, trademark, and copyright law...

Jack Daniel’s

Jack Daniel’s Properties, Inc. v. VIP Products LLC addresses creative works in the context of trademark law, asking whether humorous use of another’s trademark is protected by the First Amendment. 

Under normal circumstances, a trademark infringement is determined based on whether the use of another’s mark is “likely to cause confusion” with that of the trademark owner.

However, when a mark is used in an artistic manner, courts instead use the Rogers test, which is intended to protect the free speech. Unlike the likelihood-of-confusion test in the Lanham Act (Trademark Act of 1946), the Rogers test allows use of another’s mark as an expressive work unless the use contains no artistic relevance or explicitly misleads about the source or content of the work.

As a result, the Rogers test narrows the scope of protection for the mark. Here, VIP created a squeaky toy named “Bad Spaniels,” closely resembling Jack Daniel’s famous whiskey bottle and label.

While the original bottle has the words “Old No. 7 brand” and “Tennessee Sour Mash Whiskey,” the toy humorously proclaims, “The Old No. 2 on Your Tennessee Carpet” which is “43% Poo by Vol” and “100% Smelly.” 

Should the court affirm the squeaky toy is an expressive work, for being humorous, under the Rogers test, or should a traditional Lanham Act analysis be applied? The court’s answer may have significant implications for companies that sell items with a humorous message based on another’s trademark."