The Supreme Court, with Justice Kagan writing for the unanimous Court, issued its decision in Jack Daniel’s v. VIP Products today, and VIP is likely barking mad. The dispute revolved around a squeaky, chewable dog toy made to look like a bottle of Jack Daniel’s whiskey, but with the name “Bad Spaniels” rather than Jack Daniel’s printed on it. The toy also contained the phrase “The Old No. 2 on your Tennessee Carpet” rather than the Jack Daniel’s phrase “Old No. 7 Brand Tennessee Sour Mash Whiskey.” Jack Daniel’s sued for both trademark infringement (due to the similarity between the trade dresses) and dilution by tarnishment (due to potential association between Jack Daniel’s and feces).
The Ninth Circuit had held for VIP Products on both counts, and the Supreme Court vacated the decision based on its disagreement on both of these counts. On the trademark infringement, meaning likelihood of confusion, claim the Supreme Court disagreed with the notion that Jack Daniel’s had to make it past “any threshold First Amendment filter” (including the so-called Rogers v. Grimaldi threshold test) just because the work contained expressive content. The Court stated that no such threshold inquiries could apply “when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer’s own goods.”
The Court distinguished the case at bar from cases employing a First Amendment filter where a term was used in the title of a movie such as “Ginger and Fred” (where the Rogers test originated) or that of a song such as “Barbie Girl” (Mattel, Inc. v. MCA Records, Inc.). Justice Kagan emphasized that Rogers “has always been a cabined doctrine” but “has no proper role” when use as a source identifier is in play. Noting that many trademarks contain expressive content
few cases would even get to the likelihood-of-confusion inquiry if all expressive content triggered the Rogers filter. In that event, the Rogers exception would become the general rule, in conflict with courts’ longstanding view of trademark law.
Of course, skeptics wonder on the flip side where Rogers is relevant at this stage (meaning, which cases would otherwise be considered to have met the likelihood of confusion standard that are non-confusing based on a First Amendment filter).
There are a few possible answers here. One is that there may or may not be any such cases, but that it is not quite the right inquiry because Rogers could still be valuable in a defendant not having to spend resources on defending the likelihood of confusion claim (such as by having to run its own survey) including if the final outcome would be a finding of non-infringement either way. Another possible answer is that the Supreme Court is not sure it would uphold the use of Rogers at all if push came to shove even if it punted on the question here (see Justice Kagan’s non-flattering language about “whatever you make of Rogers” and Justice Gorsuch’s concurrence–joined by Justices Thomas and Barrett–expressing general skepticism about “where the Rogers test comes from” and recommending that lower courts not lose sight of its difficulties).
Justice Kagan disposed of the dilution by tarnishment claim more quickly and dismissed VIP Products’ argument (which the Ninth Circuit had accepted) that parody or humorous commentary counts as “noncommercial use” that can never constitute tarnishment. Justice Kagan pointed to the statutory language in the Lanham Act indicating that the fair-use exception has an exclusion for source-indicating use and concluded: “The problem with the Ninth Circuit’s approach is that it reverses the statutorily directed result” in cases such as this one and would “nullify Congress’s express limit on the fair-use exclusion for parody.”
Justice Sotomayor issued a concurrence in which Justice Alito joined in which she cautioned about careless use of trademark infringement surveys in cases involving First Amendment concerns such as parodies. She noted that in the parody context “there is particular risk in giving uncritical or undue weight to surveys.” Survey construction is an issue near and dear to my heart, having written my first trademark law review article on that topic back in the day, and it will certainly be interesting to see how the Court addresses questions regarding methodology should they make their way up.
