By Lisa M. Tittemore, Chair, and Katherine W. Soule, a member, of our Litigation Practice Group

In a case that has already garnered extensive media attention due to the fame of Jack Daniel’s whiskey and public curiosity regarding a trademark clash involving whiskey and dog toys, the U.S. Supreme Court issued a unanimous decision on June 8, 2023 confirming that VIP’s chew toys for dogs that resemble a bottle of Jack Daniel’s whiskey are not protected from trademark infringement liability by the First Amendment.

Background

The dispute at issue in Jack Daniel’s arises from a conflict between the well-known whiskey company and a dog toy company (VIP) regarding VIP’s unauthorized use of Jack Daniel’s trademarks and trade dress in connection with a dog toy that purportedly parodies the Jack Daniel’s brand by, for example, saying “Bad Spaniels” on the label instead of “Jack Daniel’s” and “The Old No. 2 on your Tennessee Carpet” instead of “Old No. 7” and “Tennessee Sour Mash Whiskey.”

In response to a cease-and-desist letter from Jack Daniel’s claiming that VIP’s “Bad Spaniels” dog toy infringed and diluted its trademark rights, VIP filed a complaint in the District of Arizona seeking a declaration of non-infringement and no dilution. The District Court agreed with Jack Daniel’s but the Ninth Circuit reversed, holding that VIP’s “humorous” use of Jack Daniel’s trademarks and trade dress qualified the toy as an “expressive work” entitled to heightened First Amendment protection, which triggered the Rogers framework - a framework developed by the Second Circuit Court of Appeals and adopted by many other circuits in a circumscribed manner to offer heightened First Amendment protection from infringement claims to artistic works, such as titles.

The Ninth Circuit also held that VIP’s “humorous message” rendered its use of Jack Daniel’s marks “noncommercial” under the Trademark Dilution Revision Act, absolving VIP of dilution liability as a matter of law.

On remand, following the Ninth Circuit’s directive, the district court reluctantly entered judgment for VIP, observing that “it is difficult to imagine what creative junior use would not pass the Rogers test” and that the test’s “explicitly misleading” requirement effectively “displaces the likelihood-of-confusion test with a standard that excuses nearly any use less than slapping another's trademark on your own work and calling it your own.” No. CV-14-02057, 2021 WL 5710730, at *6 (D. Ariz. Oct. 8, 2021).

After the Ninth Circuit summarily affirmed the district court’s ruling, the Supreme Court granted certiorari. Lisa M. Tittemore, chair of Sunstein’s Litigation Practice, co-authored an amicus brief on behalf of the American Intellectual Property Association (AIPLA) in support of a grant of a petition for certiorari.

Before the Supreme Court, Jack Daniel’s asserted that the Ninth Circuit erred in holding a “humorous” dog toy is an “expressive work” entitled to heightened First Amendment protection and that the Rogers decision – as an original matter – is “egregiously wrong” because it “creates, rather than avoids, constitutional issues,” by privileging infringers’ speech over mark owners’ own expressive speech. VIP, on the other hand, urged the Court to maintain the Rogers framework and to affirm the Ninth Circuit’s application of Rogers, characterizing Jack Daniel’s as a trademark bully “weaponizing” the Lanham Act to “muzzle” VIP’s protected speech.

Because of the broad implications of the case, it generated significant amici activity. Amici submitted 24 amicus briefs on the merits, asserting a variety of positions on the Ninth Circuit’s decision and on whether courts should continue to apply Rogers. Lisa M. Tittemore and Katherine W. Soule of Sunstein co-authored an amicus brief on behalf of the AIPLA supporting reversal of the Ninth Circuit’s misapplication of Rogers and misinterpretation of the statutory dilution exclusions, but which did not take a position on whether Rogers was decided correctly as an original matter or on the merits of Jack Daniel’s underlying case. The Supreme Court’s decision is consistent with the outcome encouraged by the AIPLA in its amicus brief.

Supreme Court’s Decision

Without taking a position on the merits of the Rogers threshold test, the Supreme Court held that use of the Rogers threshold inquiry, or any First Amendment threshold inquiry, is not appropriate when the allegedly infringing trademark is used to designate the source of the accused infringer’s own goods, as VIP has done with the “Bad Spaniels” mark. The Court explained that because VIP used marks derived from Jack Daniel’s marks and trade dress as a designation of the source of VIP’s products, “the infringement claim here rises or falls on likelihood of confusion.” In reaching this conclusion, the Court rejected VIP’s argument that its use of the “Bad Spaniels” trademark and trade dress was not intended to identify VIP’s goods (despite VIP’s admission in its complaint).

The Court relied on facts in the record, including the placement of the “Bad Spaniels” mark on the product label opposite the “Silly Squeakers” logo, as well as VIP’s practice of using and registering similar marks as trademarks in connection with its Silly Squeakers line of toys.

After reviewing the origin of the Rogers test, as well as various lower courts’ applications of First Amendment threshold tests in the trademark context, the Court concluded that Rogers has always been a cabined doctrine limited to cases involving “non-trademark uses” of the marks at issue, rather than a means to insulate from scrutiny the use of trademarks as trademarks.

The Court confirmed that when a trademark is used, at least in part, for source identification, even if there is also an expressive or parodic element to the use, likelihood of confusion is the proper analysis, and the intended parodic nature is a factor to be considered in the analysis.

Addressing VIP’s First Amendment concerns, the Court explained that if all expressive trademark uses triggered the Rogers threshold inquiry, as the Ninth Circuit suggested, “the Rogers exception would become the general rule” and “very few cases would even get to the likelihood-of-confusion inquiry.” The Court clearly stated, “When a mark is used as a mark…the likelihood-of-confusion inquiry does enough work to account for the interest of free expression.”

Relying on the language of the statute, the Court rejected the Ninth Circuit’s expansive interpretation of the “noncommercial use” exclusion from dilution liability, which “effectively nullifies Congress’s express limit on the fair-use exclusion for parody.” The Court confirmed that parody falls under the “fair use” exclusion, which only applies when the mark is not used to designate the source of the infringer’s own goods.

The Court remanded the judgment for further proceedings consistent with their opinion.

Concurring Opinions

Justice Sotomayor, joined by Justice Alito, offered a concurring opinion, agreeing with the Court’s opinion in full and writing to emphasize “that in the context of parodies and potential other uses implicating First Amendment concerns, courts should treat the results of surveys with particular caution.” Acknowledging that survey answers may reflect consumers’ misunderstanding of the legal framework and that “cleverly designed surveys could also prompt such confusion,” Justice Sotomayor urged courts to “be attentive to ways in which surveys may artificially prompt such confusion about the law or fail to sufficiently control for it” in order to avoid giving “uncritical or undue weight” to surveys.

Justice Gorsuch, joined by Justices Thomas and Barrett, authored a second concurring opinion, agreeing with the Court’s opinion and writing to underscore that lower courts should handle the Rogers threshold inquiry with care. Specifically, he noted that the Court’s decision in Jack Daniel’s leaves much about Rogers unaddressed, including the legal basis for the framework, as well as whether Rogers is correct in all of its particulars.

Implications

The Court’s decision that the Rogers threshold inquiry, or any First Amendment threshold inquiry, is not appropriate when the accused infringing trademark is used to designate the source of the accused infringer’s own goods is consistent with the Lanham Act and with longstanding precedents of the courts. Recognizing the important function of trademarks to consumers and producers alike, the Court’s decision protects consumers from confusion and allows brand owners to continue to derive value from their trademarks by allowing trademark owners to challenge infringing use under the traditional likelihood-of-confusion standard, rather than requiring them to meet a heightened threshold standard first to enforce their trademark rights.