In a highly anticipated decision, the Supreme Court in the case of Jack Daniel’s Properties, Inc. v. VIP Products LLC recently weighed in on the applicability of the Rogers test [1] and the fair-use exemption from trademark dilution liability. Justice Kagan, writing for the unanimous court, held that “when an alleged infringer uses a trademark as a designation of source for the infringer’s own goods, the Rogers test does not apply” and that “the Lanham Act’s exclusion from dilution liability for any noncommercial use of a mark, does not shield parody. . . when an alleged infringer uses a mark as a designation of source for its own goods.”
The Supreme Court made clear that it is not deciding the fate of the Rogers test or how far the noncommercial exclusion goes. Instead, the Court found that VIP Products LLC is using the Bad Spaniels trademark and trade dress to designate the source of its own goods. Such trademark use must meet an infringement claim on the usual battleground of “likelihood of confusion.” Therefore, the case is remanded to determine whether VIP’s use of its Bad Spaniels trademark and trade dress is confusingly similar to Jack Daniel’s trademark and trade dress.
Background
VIP Products makes a line of Silly Squeaker dog toys that resemble beverages such as “Jose Perro” (Jose Cuervo), “HeinieSniff’n” (Heineken), “Doggie Walker” (Johnnie Walker), and “Bad Spaniels” (Jack Daniel’s).
Soon after the Bad Spaniels toy hit the market, Jack Daniel’s sent VIP a cease and desist letter demanding VIP stop selling the toys. VIP responded by filing suit, seeking declaratory judgement that Bad Spaniels neither infringed nor diluted Jack Daniel’s trademarks. Jack Daniel’s counterclaimed for infringement and dilution.
The District Court rejected VIP’s arguments regarding the applicability of the Rogers test and that VIP’s parody of Jack Daniel’s trademarks constituted “fair use” of Jack Daniel’s famous marks at summary judgment. Then during a bench trial, the District Court found that consumers were likely to be confused about the source of the Bad Spaniels toy and that the toy’s negative associations with dog excrement (e.g., “The Old No. 2”) would harm Jack Daniel’s reputation.
The Ninth Circuit reversed, finding that an infringement claim was subject to the Rogers test. On remand, Jack Daniel’s could not satisfy either element of the Rogers test and granted summary judgment to VIP Products on the infringement claim finding the Bad Spaniels parody to be within the “noncommercial use” exclusions. The Court of Appeals affirmed, and the Supreme Court granted Jack Daniel’s petition for certiorari.
Key Takeaways
VIP has consistently argued that it owns trademarks and trade dress in its dog toys and markets its dog toys in a manner consistent with making trademark use of its Silly Squeaker dog toy names, including Bad Spaniels. Such source-indicating use of its humorous take on Jack Daniel’s trademarks and trade dress was detrimental to shielding it from the likelihood of confusion analysis.
The Rogers test is only applicable when the use of a trademark is being used to solely perform some expressive function other than to designate the source of a good. [2]
The fair use exemption is only applicable, even when engaging in parody, criticism, or commentary, when such use of a trademark is not being used to designate the source of the goods. Use of a mark does not automatically count as “noncommercial use” because it parodies, criticizes or comments on another’s product.
And now we wait to see whether Bad Spaniels is likely to cause consumer confusion as to the source of the dog toys and dilute Jack Daniel’s trademarks.
Click here to read the full opinion.
[1] The Rogers test provides that liability may apply when (1) the challenged use of a mark “has no artistic relevance to the underlying work” or (2) that it “explicitly misleads as to the source or the content of the work.”
[2] Some examples of the applicability of the Rogers test cited by the Court include: Mattel v. MCA Records, 296 F.3d 894 (9th Cir. 2002) (use of Barbie within the title of a song, Barbie Girl, was not source indicative use of Barbie trademark); University of Ala. Bd. of Trustees v. New Life Art, Inc., 683 F. 3d 1266, 1279 (2012)(Artist’s depiction of Crimson Tide’s football uniforms memorializes a notable event in football history rather than indicate source of art); Louis Vuitton Mallatier S. A. v. Warner Bros. Entertainment Inc., 868 F. Supp. 2d 172 (SDNY 2012) (the film was not using Louis Vuitton trademark as its own mark when a character in The Hangover: Part II move described his luggage as LOUIS VUITTON). Conversely, the Rogers test did not apply in the following cases where the courts found the infringing party was making trademark use of another’s mark: United We Stand Am., Inc. v. United We Stand, Am. New York, Inc., 128 F. 3d 86, 93 (1997); Harley-Davidson, Inc. v. Grottanelli, 164 F. 3d 806, 812–813 (1999); and Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 412 (SDNY 2002).
