Emilio Tovilla, Contributing Member 2023-2024
Intellectual Property and Computer Law Journal
Introduction
It is well established that Americans enjoy freedom of speech under the First Amendment of the US Constitution. The Supreme Law of the Land shields expressive works including art, movies, and books, with limited exceptions.[1] Parodies are a form of expression, usually portrayed through films or images, with the intent of being humorous. As an example, take a dog toy in the shape of a Jack Daniel’s bottle. The chew toy has comical modifications, with an alternative label of “Bad Spaniels”, and “The Old No. 2 on your Tennessee Carpet” description replacing the original “Old No. 7 Tennessee Sour Mash Whiskey.”[2] VIP Products, the creator of the toy, considered this to be a parody on the classic American whiskey brand. Further, the corporation considered the chew toy an expressive work, and therefore, an exercise of First Amendment rights. The Supreme Court however was unamused, concluding that the rubber toy fell outside the scope of protected speech and infringed on Jack Daniel’s name, logo, and bottle shape trademarks.[3]
The intersection of free speech and trademark protection became a popular subject of discussion after the Supreme Court’s opinion in Jack Daniel’s v. VIP Products, LLC. The decision was the first time the court addressed the standard for infringement claims where the defendant’s product constituted expressive works.[4] This standard was established under the Rogers test, a two-prong test stemming from the Second Circuit.[5] The Second Circuit held that the standard likelihood-of-confusion analysis for trademark infringement was not applicable to expressive works, which are subject to first amendment protection.[6] Although the First Amendment is broad, an area of speech that is subject to less protection is commercial speech.[7]
Trademarks have the purpose of identifying the source of a product to consumers, therefore having a commercial use.[8] Under the Lanham Act, trademarks are protected and subject to a likelihood of confusion analysis should infringement occur.[9] The decision in Jack Daniel’s determined that the Rogers test does not apply when an alleged infringer uses a mark as a source indicator for the infringer’s product, even when it is meant to be humorous.[10] In other words, marks that are source identifiers constitute commercial purposes, therefore not protected speech and subject to the Lanham Act’s likelihood of confusion analysis. The decision has had great impact, as trademark owners have gained protection of their commercial marks. However, it raises concern for artists and parodists, who fear that their works are more likely to raise infringement lawsuits.
This article will discuss the Supreme Court’s decision in Jack Daniel’s v. VIP Products and its impact on trademark protection. Part II will discuss background on Jack Daniel’s, as well as the Rogers test and First Amendment protection in trademark law. Part III will discuss how the decision in Jack Daniel’s will change the applicability for the Rogers test and whether parodies and humorous works are subject to less protection. Finally, Part IV concludes by making suggestions on how the Rogers test could be applied, since the Court declined to examine the merits of the Rogers test.
Background
The purpose of a trademark is to use a word, phrase, symbol, design, or any combination of the four, to distinguish one’s goods or services from others.[11] To show trademark infringement under the Lanham Act, the plaintiff must demonstrate that (1) it has a valid mark entitled to legal protection; (2) it has ownership of the mark; and (3) the infringers use of the mark in commerce causes a likelihood of confusion.[12] In a trademark infringement claim, “likelihood of confusion” is the main focus for analysis.[13] Only under narrow circumstances may a defendant overcome an infringement claim on grounds of heightened First Amendment protection.[14]
First Amendment and Rogers Test
The Lanham Act prohibits the use of marks that confuse consumers as to the affiliation of products or services with its correct source.[15] In 1989, The Second Circuit elevated the trademark infringement standard. To protect First Amendment rights, the Court established that when a mark is used in “works of artistic expression,” it is shielded as protected speech.[16] In Rogers, Ginger Rogers, a performer, sued the producers and distributors of the film “Ginger and Fred.”[17] The film featured a fictional character that imitated Ginger Rogers.[18] Rogers alleged that the title violated the Lanham Act because it falsely associated her with the film.[19] At trial, Rogers provided surveys to show that 43% of individuals exposed to the title of the film associated it with her.[20] The defendants countered, arguing that the First Amendment protected the film from Rogers’s claims.[21] In support of the defense, the film’s screenwriter asserted the title was meant to be a symbol of hope and that the film’s character was never meant to resemble or portray Ginger Rogers.[22]
The District Court ultimately held that the film was an artistic expression, not a commercial product, and therefore beyond the scope of the Lanham Act.[23] Upon appeal, the Second Circuit provided a deeper analysis, recognizing that artistic expression can be commercial.[24] To establish a standard for free speech and trademarks, the Court created the two-prong Rogers test. Under the test, non-commercial artistic work is free speech immune from the Lanham Act when a) the title of the work has some artistic relevance to the underlying work and b) that the title is not explicitly misleading as to the source of the content of the work.[25]
The test is aimed at balancing freedom of expression, protected under the First Amendment, with freedom from consumer confusion, protected by the Lanham Act.[26] When a mark can meet the threshold of the Rogers test, it becomes a strong defense for alleged infringers.
Jack Daniel’s Case
Jack Daniel’s is well known for production of its signature Old No. 7 Tennessee Whiskey, a charcoal-mellowed whiskey originating in the nineteenth century.[27] The company owns trademarks for its brand name, logo, and bottle shape.[28] VIP Products, a dog toy company, carries a line of rubber chew toys known as “Silly Squeakers.”[29] The majority of toys in this line are designed to resemble beverages brands, making a parody of each.[30] In 2014, VIP began production of a toy resembling a Jack Daniel’s bottle.[31] The toy used the label “Bad Spaniels” and replaced Jack Daniel’s “Old No. 7 Tennessee Sour Mash Whiskey” description with “The Old No. 2 on your Tennessee Carpet”.[32] Upon discovery of the parody, Jack Daniel’s requested that VIP cease production of the chew toy, which VIP declined to do.[33]
VIP sought a declaratory judgment that Bad Spaniels did not infringe nor dilute Jack Daniel’s trademarks.[34] Jack Daniel’s countered with claims of trademark infringement and trademark dilution under the Lanham Act.[35] VIP then argued that Jack Daniel’s claims failed under the Rogers test, meaning that its parody was subject to heightened First Amendment protection because it constituted an expressive work.[36] The Ninth Circuit found for VIP, holding that the parody was protected under the First Amendment unless Jack Daniel’s could overcome the Rogers test and show that VIP’s use (1) was “not artistically relevant to the underlying work” or (2) “explicitly mislead consumers as to the source or content of the work.”[37]
Upon review by the Supreme Court, the issue was to determine which test applied in a trademark infringement claim where the defendant’s product was considered an expressive work.[38] In an infringement case, courts usually apply the Lanham Act’s likelihood of confusion standard to determine whether consumers would confuse two marks.[39] Jack Daniel’s argued that the Lanham Act applied to VIP’s parody and that the chew toy was not protected free speech.[40] Further, Jack Daniel’s argued that the Rogers test was applicable solely to artistic works and not to marks that inform the source of a product.[41] According to Jack Daniel’s, the marks on VIP’s chew toy relate to its source of production.[42]
VIP countered these claims, first by asserting that the marks on its toy did not cause confusion as to who produced it because the marks referenced a fictional product and did not directly reference Jack Daniel’s whiskey.[43] Second, VIP argued its dog toy was a parody of the Jack Daniel’s brand and expressed a humorous message, therefore an expressive work protected by the First Amendment.[44] Additionally, VIP conceded that the marks on the toy were essentially its trademarks.[45] However, VIP asserted that First Amendment protection extends to expressive messages on commercial products.[46]
In its opinion, the Supreme Court concluded that the Rogers test applies if a mark is purely expressive and used in a “non-source-identifying way.”[47] Further, the Court asserted that a mark cannot be non-commercial if it is used for the purpose to identify a product’s source.[48] Although the marks on VIP’s toy had the objective to express humor, the comical effect alone does not automatically qualify a mark as protected speech. VIP’s marks had the purpose of identifying the chew toys source in a commercial setting.[49] Additionally, the Court pointed out that VIP conceded the marks were essentially its trademarks for a toy it inserted into the stream of commerce.[50] Since the marks were not purely expressive and constituted a commercial use, the Rogers test was not applicable, and VIP’s toy was subject to the likelihood of confusion analysis under the Lanham Act.[51] However, the Court also explained that issues related to humor, parody and expression are relevant in assessing likelihood of confusion under the Lanham Act.[52]
Discussion
For any trademark infringement case, the focus will be on whether the infringer’s mark would likely cause confusion with the plaintiff’s mark.[53] The Second Circuit’s creation of the Rogers test had the purpose of protecting free speech in matters of trademarks, therefore barring artistic works from likelihood of confusion analysis.[54] Until Jack Daniel’s, the understanding of the test was that it generally applied to non-commercial marks.[55] However, The Court narrowed the test by asserting that use of a mark cannot be “noncommercial” when it is used as a source identifier.[56] The decision clarifies that the Rogers test is only applicable in the narrow situation where a work is solely expressive.[57] The Jack Daniel’s ruling is considered a huge win for trademark owners, but has left others nervous about possibilities of infringement with regard to parodies and artistic expressions.
Impact on the Rogers Test
The Rogers test established that when a mark is “expressive,” it can avoid claims under the Lanham Act unless (1) the use of the mark “has no artistic relevance to the underlying work” or (2) the use of the mark “explicitly misleads as to the source of the content of the work.”[58] The Supreme Court’s unanimous opinion was a landmark decision because it clarified that the Rogers test applies to “non-trademark uses.”[59] The clarification narrowed the circumstances to situations where a defendant has an expressive mark but does not use it to identify the source of a product.[60] The standard has been narrowed so much that even the slightest indication that a mark is a source identifier, or only serves to partially identify a source will deem the Rogers test inapplicable.[61] In a case such as Jack Daniel’s where a parody of another’s product is involved, the freedom of expression and the Rogers test does not protect the parody if it contains marks used as source identifiers.
The Supreme Court narrowed the test to uphold the purpose of trademarks, which is to inform consumers of where products and services originate.[62] If the Rogers test was applied more loosely, the Court believes it would provide infringers the opportunity to combat claims under the Lanham Act more easily.[63] This would permit infringement disguised as a first amendment right and take away a trademark owner’s full control of its trademark.[64] The Court went on to state that if Rogers protected any and all humorous marks, messages, or parodies, trademarks would lose immense protection because trademarks are often expressive works.[65] The Court did however provide some reassurance for artists and parodists after narrowing the test.
Impact on parodies and humorous works
The Court’s ruling ultimately favored Jack Daniel’s because it rejected VIP’s argument that its parody mark was protected speech, therefore avoiding scrutiny under the Lanham Act. However, in its decision the Court explained that parody, humor, and expression will be a factor weighed in determining whether a likelihood of confusion exists between two marks.[66] This indicates that artists and parodists will still have first amendment protection of their works.[67] The crucial piece to remember is that that parody works are not protected if used as a mark to identify a product’s source.
Although VIP’s Bad Spaniels chew toy had its own approach, the chew toy was a product in commerce. VIP also claimed the marks on the toy as its trademarks. This clearly demonstrated that the parody descriptions and labels on the chew toy were to associate the toy with VIP. Based off these findings, VIP’s use of marks is subject to a likelihood of confusion analysis to determine whether consumers would confuse the chew toy’s source with Jack Daniel’s. The Court’s narrow interpretation therefore does not seem to limit VIP’s or other parodists’ freedom of speech, but rather places protection on consumers to avoid misleading marks in commerce.
In its opinion, the Court gave examples of how marks can be used in different scenarios, with some infringing and others not.[68] One example was that of a filmmaker using a Louis Vuitton suitcase in a movie for the purpose of associating it with a character and his demeanor.[69] This would not confuse consumers because the presence of a Louis Vuitton suitcase would not insinuate that the film produces Louis Vuitton products.[70] However, if a luggage manufacturer used an altered version of the LV logo on its products it could create likelihood of confusion because the LV logo provides information as to who produces it.[71]
Conclusion
The Supreme Court had not reviewed nor provided an opinion on the merits of the Rogers test. Further, the Court has not determined whether marks that constitute parodies or humor should be subject to an alternative analysis than the standard Lanham Act test for infringement.[72] Although the Rogers test from the Second Circuit is the test addressed in Jack Daniel’s, different circuits have created distinct versions of Rogers.[73]
Since the Supreme Court has not given an opinion on the proper test to be applied in cases of parodies and alleged infringement, one suggestion is the Fifth Circuit’s version of the Rogers test. For the second prong of the test, the Fifth Circuit has incorporated the non-exhaustive likelihood of confusion factors.[74] This test seems to allow more detailed analysis as to whether a parody mark is likely to cause confusion amongst consumers. A more strenuous version of the Rogers test is used in the Fourth, Sixth, Ninth, and Eleventh Circuits. The test here is separate from the elements to show trademark infringement, therefore creating more inquiries.[75] First, the defendant must show that its infringing mark is an expressive work protected by the First Amendment.[76] Then, the plaintiff must try to prove one of the two prongs of the Rogers test.[77] This could also be a suggestion that seems to protect the interest of both parties.
In conclusion, trademark protection has been increased. While it may seem that freedom of speech was reduced from this decision, the ability to produce parodies or use marks in films is still very much within an individual’s First Amendment rights. The Rogers test will provide protections for a person’s mark so long as it is used exclusively for the purpose of expression or artistic matters. Expressive works will fall out of these protections if the mark is designated to identify a product’s source to consumers. This will deem the mark commercial and subject to the Lanham Act’s likelihood of confusion analysis. The ultimate goal of a narrowed test is to uphold the purpose of trademarks, which is to inform consumers of where products and services originate. In order to accurately inform consumers, trademark owners must have full control of their marks, thus the need for limitations on unauthorized use, even if done in a humorous way.
[1] First Amendment, Cornell L. Sch. Legal Info. Inst., (Dec. 2022), https://www.law.cornell.edu/constitution/first_amendment.
[2] Russell S. Jones Jr. & Michael D. Pagues, Re-Setting the Balance: Jack Daniels’ Properties, Inc. v. VIP Products, LLC, The Nat’l Law Review, (June 13, 2023), https://www.natlawreview.com/article/re-setting-balance-jack-daniels-properties-inc-v-vip-products-llc.
[3] Id.
[4] Deborah A. Wilcox, Lisa Bollinger Gehman, & Gerald J. Ferguson, Rogers Test Not Applicable When Mark is Used as Trademark, Baker Hostetler, (June 16, 2023), https://www.ipintelligencereport.com/blogs/rogers-test-not-applicable-when-mark-is-used-as-a-trademark/.
[5] Ivan Blomquist, The Rogers Test: Free Speech vs. Trademark Protection, Moeller, (Feb. 12, 2021), https://moellerip.com/the-moeller-blog/the-rogers-test-free-speech-v-trademark-protection/.
[6] Thomas W. Brooke & Cynthia A. Gierhart, Supreme Court Rules on Rogers Test Regarding Parodies of Others’ Trademarks, Holland & Knight, (June 12, 2023), https://www.hklaw.com/en/insights/publications/2023/06/supreme-court-rules-on-rogers-test-regarding-parodies.
[7] Commercial Speech, Cornell L. Sch. Legal Info. Inst., (Aug. 2022), https://www.law.cornell.edu/wex/commercial_speech.
[8] What is a Trademark?, US Pat. and Trademark Off., (Mar. 31, 2021, 12:00 PM), https://www.uspto.gov/trademarks/basics/what-trademark.
[9] Trademark Infringement, Cornell L. Sch. Legal Info. Inst., (Nov. 25, 2023), https://www.law.cornell.edu/wex/trademark_infringement.
[11] Likelihood of Confusion, US Pat. and Trademark Off., (Feb. 19, 2021, 9:10 AM), https://www.uspto.gov/trademarks/search/likelihood-confusion.
[12] Trademark Infringement, supra note 9.
[13] Id.
[15] Likelihood of confusion, supra note 11.
[16] Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).
[18] Meaghan H. Kent & Tricia L. Brown, A Win for Trademark Owners: The Supreme Court’s Ruling in Jack Daniel’s Properties Inc. V. Vip Products, Morgan Lewis,(June 12, 2023), https://www.morganlewis.com/pubs/2023/06/a-win-for-trademark-owners-the-supreme-courts-ruling-in-jack-daniels-properties-inc-v-vip-products.
[20] Id.
[21] Id.
[22] Id.
[23] Id.
[24] Id.
[25] Id.
[26] David Bell, Joseph Lawlor & Asal Saffari, Unanimous Supreme Court Finds Rogers Test Does Not Apply When Trademark Is Used As Source Identifier, Haynes Boone, (June 8, 2023), https://www.haynesboone.com/news/alerts/unanimous-supreme-court-finds-rogers-test-does-not-apply-when-trademark-is-used-as-source-identifier.
[27] Born to make whiskey, Jack Daniel’s, (Nov. 26, 2023), https://www.jackdaniels.com/en-us/our-story.
[29] Jack Daniel’s Props. v. VIP Prods. LLC, 143 S. Ct. 1578, 1585 (2023).
[30] Id.
[31] Id.
[32] Id. at 1582.
[33] Id. at 1585-86.
[34] Id. at 1586.
[35] Id.
[37] Dan Schweitzer, Supreme Court Report: Jack Daniel’s Properties, Inc. v. VIP Products LLC, 22-148,Nat’l Assoc. of Attorneys Gen., (Dec. 14, 2022), https://www.naag.org/attorney-general-journal/supreme-court-report-jack-daniels-properties-inc-v-vip-products-llc-22-148/.
[39] Id.
[40] Dustin Hartuv & Matthew Hornung, Jack Daniel’s Properties, Inc. v. VIP Products, LLC, Cornell L. Sch. Legal Info. Inst, (Nov. 28, 2023), https://www.law.cornell.edu/supct/cert/22-148.
[41] Id.
[42] Id.
[43] Id.
[44] Id.
[45] Id.
[46] Id.
[48] Id.
[49] Id.
[50] Id.
[51] Id.
[53] Trademark Infringement, supra note 9.
[55] Id.
[57] Id.
[58] Id.
[59] Id.
[60] Id.
[61] Id.
[62] Id.
[63] Id.
[64] Brad Japhe, Jack Daniel’s Trademark Dispute is Headed to the Supreme Court, Forbes, (Nov. 25, 2022 10:36 AM) https://www.forbes.com/sites/bradjaphe/2022/11/25/jack-daniels-trademark-dispute-is-headed-to-the-supreme-court.
[69] Id.
[70] Id.
[71] Id.
[72] Id.
[73] Laura Goldbard George & Binni N. Shah, The First Amendment: Apparent Immunity from Trademark Infringement?, Strook, (Feb. 2019), https://www.stroock.com/uploads/firstamendmentapparentimmunityfromtrademarkinfringement.pdf.
[74] Id.
[75] Id.
[76] Id.
[77] Id.
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