It is no surprise that the value of a trademark continues to rise in the United States economy due to its ability to drive consumer spending. Trademarks play a significant role in distinguishing the sources of goods and services, providing legal protections, and offering economic incentives to businesses. The main goal of trademark law is to protect consumers by supporting clear identification of products and fostering trust in the marketplace.

However, with the increase in trademark rights, complications can arise when cases involve artistic or creative rights and First Amendment implications are raised. Trademarks do not just serve to identify the source of a product or service, but also serve as a communication link between consumers and businesses by ensuring a consistent quality based on the goodwill built by the company.

Courts have long grappled with finding a balance between protecting trademark owners’ rights and safeguarding free speech, especially when trademarks are used in parody or other forms of expression. The public holds a significant interest in freedom of expression; specifically in the public’s ability to discuss, criticize, and make fun of brands without facing liability. The case of VIP Products v. Jack Daniel’s[i] (“VIP Case”) presents a significant development in this area, as the Supreme Court narrowed the Rogers[ii] test application, which was initially developed by the Second Circuit to provide heightened First Amendment protection to expressive works. The VIP Case highlights the tension between protecting an individual’s freedom of expression and a trademark owners’ rights provided under the Lanham Act[iii], while leaving several unanswered questions about its future implications.

Background

            A trademark is “any word, name, symbol, or device, or any combination thereof” used to “identify and distinguish his or her goods…from those manufactured or sold by others to indicate the source of goods.”[iv] While a trademark can serve other roles, its main purpose is to “tell [] the public who is responsible for a product.”[v]

            The balance of providing any intellectual property rights is to promote economic activity while also “preventing its suffocation.”[vi] This distinction often tows a fine line. When the goals of trademark law are met, in theory both consumers and producers will benefit.[vii] Consumers are able to quickly find their favorite goods and services, based on their past experiences or reviews from the general public, without worry of being duped.[viii] And producers receive the financial returns from their efforts to build positive goodwill in the market.[ix]

The Lanham Act seeks to further these goals by providing a cause of action for trademark infringement which requires the plaintiff show that the alleged infringer’s use of a mark is likely to cause confusion about the source or support of the good or service.[x] Courts typically apply a series of inexhaustive and non-conclusive factors (the Ninth Circuit uses the Sleekcraft factors) which aim at determining if there is a likelihood of confusion.[xi] If these factors are weighed to show that there is a likelihood that the relevant consumers will be confused, courts usually find trademark infringement.[xii]

The Lanham Act also provides a claim of action for dilution. Dilution of a famous mark can occur in one of two ways: blurring or tarnishment.[xiii] Dilution by blurring occurs when the use of a similar mark weakens the distinctiveness of a famous mark, even if there is no likelihood of consumer confusion.[xiv]  Dilution by tarnishment occurs when the use of a similar mark by the defendant harms the reputation of the famous mark.[xv]

Noticeably, trademark law implicates First Amendment concerns of freedom of expression.[xvi] While the likelihood of confusion test attempts to balance the public’s interest in freedom of expression with the trademark owner’s interests, there are heightened concerns for expressive works.[xvii] The Second Circuit addressed these concerns in Rogers v. Grimaldi, where actress Ginger Rogers sued producers of the film “Ginger and Fred” for using her name in the title.[xviii] The court recognized that certain works are unique in that they “are of hybrid nature, combining artistic expression and commercial promotion.”[xix]

This court established what is now known as the Rogers test which applies to “expressive works” only, providing them with more First Amendment protection. The test has two parts: first, the court must determine whether the challenged work is in fact an “expressive work.” [xx] Next, the plaintiff must show that the defendant’s use (1) “has no artistic relevance to the underlying work” or (2) “explicitly misleads as to the source or content of the work.” If the plaintiff fails to show either of these, the infringement claim is dropped. [xxi]

However, the Second Circuit failed to specifically define what an “expressive work” is, which has led to varying applications by different circuits. Currently, the Third, Fifth, Sixth, Ninth, and Eleventh Circuits have adopted the Rogers test, although with some ambiguity as to its specific application.

“Bad Spaniels”

The Jack Daniel’s Properties v. VIP Products LLC case occurred between whiskey manufacture Jack Daniel’s and dog toy company VIP Products.[xxii] Jack Daniel’s is a famous brand, being one of the best-selling whiskey brands. VIP Products sells a series of dog toys in its Silly Squeakers line, designing most of them to look like and parody popular brands. The dog toy at focus in Jack Daniel’s is one which spoofed several of Jack Daniel’s trademarks: (1) Instead of “Jack Daniels,” the toy was titled “Bad Spaniels;” (2) instead of the “Old No. 7” trademark, the toy included “Old No. 2, on your Tennessee Carpet;” (3) the toy included the verbiage “43% poo by vol” and “100% smelly” rather than “40% alc. by vol. (80 proof);” and (4) the toy contained Jack Daniel’s distinctive square bottle and stylized white lettering, with a photo of a spaniel.

            The Supreme Court noted that “these jokes did not impress petitioner Jack Daniel’s.”

After receiving a cease-and-desist letter from Jack Daniel’s, VIP filed suit seeking a declaratory judgment that their dog toy did not infringe upon or dilute Jack Daniel’s marks. Jack Daniel’s countersued for infringement and dilution. The district court rejected both of VIP’s arguments for summary judgment: (1) holding that the Rogers test does not apply to works which are being used as a mark and (2) rejecting VIP’s fair-use defense, finding that the parody exception only applies to marks not being used as a source indicator. After a bench trial, the District Court found that that there was a likelihood of confusion, and therefore trademark infringement. It also found that there was dilution by tarnishment, because the dog toy’s references to dog poop would harm Jack Daniel’s reputation.

The Ninth Court of Appeals reversed the District Court on both claims. First, the court found that the funny message of the dog toy was sufficient to constitute an expressive work, and therefore should be analyzed under the Rogers test as the threshold. As to Jack Daniel’s dilution claim, the court referred to Louis Vuitton (which also focused on a parody dog toy), finding that the dog toy was a parody which fell under the fair-use defense. After the Ninth Circuit’s holding, Jack Daniel’s filed a writ of certiorari to the Supreme Court, which was subsequently denied. On remand, the District Court ruled consistently with the Ninth Circuit’s opinion, finding in favor of VIP. Jack Daniel’s then appealed again, and the Ninth Circuit affirmed the District Court’s opinion. Finally, Jack Daniel’s filed a second writ of certiorari, and the Supreme Court granted Jack Daniel’s petition in November of 2022.

            Justice Kagan authored the unanimous decision of the Supreme Court.[xxiii] Making it clear that the Court was not deciding the validity of the Rogers test in other circumstances, the Court held that the Rogers test does not apply to uses as a source indicator to the alleged infringer’s own products or services. While the attempt to parody or mock the trademark owner may be relevant in showing that there is less risk of confusion, the success of the infringement claim is still determined by the likelihood of confusion.

            In its opinion, the Court emphasized its reasoning as furthering the purpose of the Lanham Act. Requiring the Rogers test for any expressive works would allow defendants to utilize the goodwill of the trademark owner to market its own goods and services, exactly what trademark law aims to prevent. The Court stated that consumer confusion is the “cardinal sin” of trademark law, and the defendant’s use of the trademark as a source indicator is most likely to cause confusion.[xxiv]

            The Ninth Circuit’s approach of using the Rogers test as a threshold for expressive works would “take over much of the world,” because most trademarks contain expressive elements, along with performing its role as a source indicator.[xxv] Instead, the Court stated that when the mark is being used as a trademark, while it may have some expressive elements, the Lanham Act balances well with First Amendment concerns. It emphasized that the likelihood-of-confusion test does enough to account for the interest of free expression.

            In the case of the “Bad Spaniels” dog toy, VIP was using the trademark and trade dress to identify its source as a Silly Squeakers toy. Therefore, SCOTUS remanded the case back to assess the likelihood of confusion, taking into consideration the parodic message.

            Also reversing the Ninth Circuit’s holding on the dilution by tarnishment claim, the Court applied the fair-use statute, which states that there is no defense when the use is being utilized as a source-indicators. The Court declined to discuss the limits of noncommercial use.

Implications of the Jack Daniel’s Holding

            While the holding in Jack Daniels is narrow, it left many unanswered questions and has significant implications. The first question left open is where the Rogers test now stands. As stated above, Justice Kagan made it clear that this holding applies in limited circumstances. The Court was not deciding whether Rogers is appropriate in other cases, just that it is not appropriate where the mark’s use is source identifying. While SCOTUS seems hesitant to overturn Rogers completely, it also warns lower courts to limit its uses. In his dissent, Justice Gorsuch stated that lower courts should handle the Rogers test “with care,” citing concerns of uncertainty about where it comes from and whether it is correct in its entirety. However, Justice Kagan also discussed how the holding was consistent with the original application of the test.

Another question left unanswered by the Jack Daniel’s Court is the distinction on a trademark use (where the Rogers test certainly does not apply) and a non-trademark use (where the Rogers test may still apply). In this case, the Court discussed some details about VIP’s use of the potentially infringing mark on its packaging. However, it did not need to discuss the distinction in detail, because VIP had conceded its use of the mark and trade dress as a source indicator. Therefore, the Court did not need to provide any guidance for analyzing whether there is a trademark use or a non-trademark use in cases where there is no concession of source-indicating use. If VIP had not conceded this fact, the outcome of the case may have turned out differently. Jack Daniel’s would have been required to prove that VIP’s use was not an expressive non-trademark. This may cause increased litigation based on this categorization, which is likely to be analyzed on a case-by-case basis.[xxvi] There have already been cases in the lower courts where there is increased confusion on application of the Jack Daniel’s distinction between trademark use and non-trademark use.[xxvii]

On the other hand, some argue that Kagan’s opinion provides enough context through examples which provides guidelines to determining whether something is “use as a designation of source.”[xxviii] As examples of non-trademark uses, she provides the movie title at issue in Rogers, the “Barbie Girl” song,[xxix] the sport artist’s use of Alabama’s football uniforms,[xxx] and a line featuring Louis Vuitton in Hangover: Part II.[xxxi] While these marks may be being used in a commercial way and may generate financial benefit to the user, they are not being used to indicate their producer. As examples of trademark uses, she provides the political movement’s use of “United We Stand America,”[xxxii] a motorcycle’s use of a modified Harley Davidson logo,[xxxiii] and a dog perfume called “Timmy Holedigger.”[xxxiv] These, on the other hand are used in a way as to identify their goods or services and distinguish them from others in the market.  Therefore, it may be clear that a source-indicating use is one which may entitle it to trademark rights if they were not infringing on the actual owner’s rights.[xxxv]

The holding in Jack Daniel’s furtherraises concerns that it will provide too many rights to trademark owners, enabling them to restrict speech, as there is a rising level of overlap between expression and trademarks. Because many defendants lack resources to pursue a defense through litigation, they often cave to the threat of a cease-and-desist letter. This holding could provide another way to suppress speech. Further, the unknown of what constitutes a non-source identifying mark subjected to the heightened standard under Rogers has the potential of creating a chilling effect on lawful expressions and speech.[xxxvi] However, it is also arguable that the Court’s reasoning will prevent fruition of these concerns; that the likelihood of confusion test is adequate on its own to balance trademark rights versus First Amendment interests. This test has been relied on by courts for over a century to meet this balance while furthering the goals of trademark law, and by not providing a claim over uses where there is no likelihood of confusion.

The impact of this case poses heightened risk of liability on creatives, specifically parody product creators. While the future of the Rogers test remains uncertain, these producers should take measures to ensure that their expressive works are utilizing another owner’s mark in a way that is not source-identifying. Parodic companies may also be forced to pursue licensing deals to avoid potential liability. Obviously, trademark owners benefit the most from the Jack Daniel’s holding, because it is difficult to overcome the heightened First Amendment protections of the Rogers test. It provides them with broader protection in their rights and increased means to pursue infringement claims against users which may be parodic but also used to indicate the source of the alleged infringer’s products or services.

Conclusion

The Jack Daniel’s v. VIP Products decision shows the continuing difficulties in balancing trademark protection with First Amendment rights, especially in cases involving parody and expressive works. While it is unclear where exactly the Rogers test stands or what the implications of this holding may be, this decision also makes it clear that the test should not apply when a trademark is used to identify the source of a product or service.

Moving forward, creators may need to be more intentional in using trademarks as part of their expressive works, while trademark owners may gain more leverage in protecting their brands. Time will determine the distinguishment of purely expressive works and those that serve as source indicators.

Blaykleigh Smythe is a third-year law student at the University of Idaho College of Law. She is currently a member of the Idaho Law Review and will clerk with the Idaho Supreme Court starting in Fall 2025.

[i] Jack Daniel’s Properties, Inc. v. VIP Prod. LLC, 599 U.S. 140 (2023).

[ii] Rogers v. Grimaldi, 875 F.2d 994, 998 (2d Cir. 1989).

[iii] 15 U.S.C. §§ 1051-1141n.

[iv] 15 U.S.C. § 1127.

[v] Jack Daniel’s, 599 U.S. at 146.

[vi] Hannah Hall, Pooch Over Hooch: Why Parody Prevailed in VIP Products, LLC v. Jack Daniel’s Properties, Inc., J. INTELL. PROP. L. ONLINE (Nov. 27, 2020), https://jipl online.com/2020/11/27/pooch-over-hooch-why-parody-prevailed-in-vip-products-llc-v-jack- daniels-properties-inc/ [https://perma.cc/XLK8-VWT4].

[vii] Jack Daniel’s, 599 U.S. at 146.

[viii] Id.

[ix] Id.

[x] 15 U.S.C. § 1125(a).

[xi] AMF v. Sleekcraft Boats, 599 F.2d 341­–49 (9th Cir. 1979).

[xii] Id.

[xiii] 15 U.S.C. §1125(c).

[xiv] Id.

[xv] Id.

[xvi] Jack Daniel’s, 599 U.S. at 140.

[xvii] Rogers, 875 F.2d at 998.

[xviii] Id.

[xix] Id.

[xx] Id. at 998.

[xxi] Id. at 999.

[xxii] Jack Daniel’s, 599 U.S. at 140.

[xxiii] Id.

[xxiv] Id. at 143.

[xxv] Id. at 158.

[xxvi] Allison Richards, Navigating the Trademark Parody Paradigm: Assessing the Impact of the “Bad Spaniels’ Decision on Ip Owners, Creatives, and Self-Parody in the Post-Jack Daniel’s Era, 31 J. Intell. Prop. L. 305, 318 (2024).

[xxvii] Stacey Dogan & Jessica Silbey, Jack Daniel’s and the Unfulfilled Promise of Trademark Use, Cardozo L. & Entertain. J., 1, 8 (2024).

[xxviii] Id.

[xxix] Mattel Inc. v. MCA Inc., 296 F. 3d 894 (9th Cir. 2002).

[xxx] University of Ala. Bd. of v. New Life Art, Inc., 683 F. 3d 1266 (11th Cir. 2012).

[xxxi] Louis Vuitton Malletier S.A. v. Warner Bros. Entertainment Inc., 868 F.Supp.2d 172 (S.D.N.Y. 2012).

[xxxii] United We Stand Am., Inc. v. We Stand, Am. New York, Inc., 128 F. 3d 86(2d Cir. 1997).

[xxxiii] Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806 (2d Cir. 1999).

[xxxiv] Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F.Supp.2d 410 (S.D.N.Y. 2002).

[xxxv] Richards, supra note 22.

[xxxvi] Id.