Hunton Retail Law Resource

Branding is central to the sale of products and services for many retailers. In a case involving a whiskey bottle dog toy with important findings for retailers and brand protection, the Supreme Court vacated the Ninth Circuit’s rulings on trademark infringement and trademark dilution in Jack Daniel’s Properties, Inc. v. VIP Products LLC.

VIP makes a “Bad Spaniels” dog toy “designed to look like a bottle of Jack Daniel’s whiskey.” Jack Daniel’s accused VIP of trademark infringement and trademark dilution. Jack Daniel’s claimed that Bad Spaniels infringed and diluted trademarks in the Jack Daniel’s bottle, and words and graphics on the label. Jack Daniel’s argued that Bad Spaniels infringed “by leading consumers to think that Jack Daniel’s had created, or was otherwise responsible for, the dog toy,” and Bad Spaniels diluted the trademarks by associating the whiskey with “dog excrement.”

On the trademark infringement claim, the Court held that the Rogers test—often applied in cases where a trademark is used in, and bears some artistic relationship to, an “expressive work”—“does not apply when the challenged use of a mark is as a mark,” (i.e., when “the accused infringer has used a trademark to designate the source of its own goods”). On the trademark dilution claim, the Court held that “the noncommercial exclusion [of the Lanham Act] does not shield parody or other commentary when its use of a mark is similarly source-identifying.” The Court remanded the trademark infringement claim to the courts below to decide “whether the Bad Spaniels marks are likely to cause confusion.”

The Supreme Court’s opinion, written by Justice Kagan, rejected both the Ninth Circuit’s expansive application of the Rogers test to “expressive work” cases where trademarks act as trademarks and the expansive view of the noncommercial use exclusion. For the infringement claim, the Court found that under the Ninth Circuit’s application of Rogers, “few cases would even get to the likelihood-of-confusion inquiry,” as trademarks “are often expressive” in some way. The Court noted that where a trademark is used as a trademark, the likelihood-of-confusion inquiry will sufficiently “account for the interest in free expression.” Concerning dilution, the Court found that the Ninth Circuit’s view of the “noncommercial use” exclusion effectively nullified “Congress’s express limit on the fair-use exclusion for parody,” further stating, “the fair-use exclusion has its own exclusion: It does not apply when the use is ‘as a designation of source for the person’s own goods or services.’”

The Court’s ruling diminishes the protection available to retailers accused of trademark infringement under the Rogers test and likely will have the effect of limiting the use of the Rogers inquiry as a filter prior to the likelihood-of-confusion analysis to cases where the allegedly infringing product uses the plaintiff’s mark only in an expressive context and not as a source identifier. Retailers enforcing trademarks against parodic marks can therefore avoid a dismissal of their claims under the Rogers test when the accused marks are used as source identifiers. 

Accused infringers may still avail themselves of a parody defense to infringement. The Supreme Court stated that “a trademark’s expressive message—particularly a parodic one, as VIP asserts—may properly figure in assessing the likelihood of confusion.” A parodic mark that is not solely used in an expressive context may be sufficiently expressive to avoid infringement, however, the accused infringer must make these arguments alongside the other factors of the likelihood of confusion analysis. As Justice Kagan noted, not every infringement case involving a source-identifying use will require “full-scale litigation” but the Rogers test will no longer be applied as a “shortcut to dismissal” in cases involving the use of trademarks as trademarks. 

From a more practical perspective, Jack Daniel’s suggests that retailers considering creating products that parody well-known trademarks should make efforts to separate their expressive content from their branding. For example, VIP’s packaging included two marks: one for “SILLY SQUEAKERS,” the overall product line, and one for “BAD SPANIELS,” the specific toy. Had the product been otherwise the same, but the branding focused prominently on the mark SILLY SQUEAKERS, VIP may have been able to avail itself of Rogers test to secure an early dismissal, even after this decision. While the exact manner in which lower courts will handle the Rogers test is not yet known, it is clear that in Jack Daniel’s the Supreme Court has made it easier for retailers to protect their brands against infringement by parodic, or arguably parodic, marks. Retailers facing infringement allegations or considering the use of marks that parody other brands should take caution.