Jack Daniel’s High Court Win Leaves Trademark ‘Rogers Test’ Hazy

Jack Daniel’s Properties Inc. convinced the US Supreme Court to barricade one path to a test for trademarks in expressive works, even as the justices declined to ax the test itself.

A unanimous court said the Rogers test doesn’t apply to unlicensed use of a trademark to help identify a product’s source—to using “another’s trademark as a trademark.” But the high court declined to reject—or even opine on—the widely adopted standard as it rejected the Ninth Circuit’s use of the test to clear VIP Products LLC’s Bad Spaniels dog toy of trademark infringement.

The result will allow brand owners to more confidently attack products they feel free-ride on recognition of their brands and curb what some legal professionals saw as Rogers’ creeping overreach. That will force VIP and makers of comparable products to litigate a traditional, more rigorous likelihood-of-consumer-confusion analysis rather than the simpler Rogers test.

But, for now, the ruling preserves the lawsuit escape hatch’s application to traditional works in circuits that have adopted it, generally allowing artistic use of marks within art, music, books, and movies. By not deciding whether Rogers could ever be appropriate and offering little guidance as to what constitutes use as a trademark, the justices left open important questions.

“The emphasis on trademark use resurrects something that courts of appeals have mostly rejected, and so it’s going to generate a lot of questions,” intellectual property professor Rebecca Tushnet of Harvard University said. “How do you know when something is being used as a trademark? And how is that distinguished from use that is confusing?”

Several attorneys noted the explicitly narrow nature of the opinion, which didn’t appear to upset any other circuit precedent. But some said brand owners at least know they can take makers of products spoofing their marks beyond the Rogers test and into a likelihood-of-confusion-analysis—as has happened in past cases involving dog product spoofs of human brands.

“There are many businesses whose entire business model is based on creating product lines that mock famous brands. In the wake of this decision, those businesses should promptly reevaluate their product lines,” IP attorney Nicole Haff of Michelman & Robinson LLP said.

A Different Framework

The Rogers test originated in the Second Circuit’s 1989 decision in Rogers v. Grimaldi, where the court shot down actress Ginger Rogers’ right-of-publicity and Lanham Act false-endorsement claims over the title of the movie “Ginger and Fred.” The test—use is permissible if it has artistic relevance and isn’t explicitly misleading—has been extended to trademark cases.

The test, which has been adopted by several circuits without being explicitly rejected by any, has become controversial among brand owners for essentially blessing spoof-adjacent confusion. The Ninth Circuit’s reversal of a lower court on Bad Spaniels further alarmed brand owners who felt the test has been overextended to commercial products.

While Jack Daniel’s and the US government urged the court to ax the Rogers test altogether, others including the International Trademark Association instead encouraged the court to cabin it to “traditional works” and not “commercial products.” Some, including Tushnet, argued that no such distinction existed.

The Supreme Court did cabin Rogers, but in a different way. Without taking a position on whether the test should ever be used, the court said it certainly didn’t apply to an alleged infringer using trademarks as or within their own trademark. VIP had used Jack Daniel’s trade dress as the shape of the dog toy itself and had elements of it on its hangtag, a frequent location for trademarks.

Illustration by Jonathan Hurtarte/Bloomberg Law

The Supreme Court rejected the Ninth Circuit’s finding that because VIP had expressed a humorous message, Rogers should apply. The chew toy’s shape mimicked the iconic Jack Daniel’s bottle shape and spoofed the label by replacing “Old No. 7” with “Old No. 2,” and “Tennessee Sour Mash” with “On Your Tennessee Carpet.”

“On that view, Rogers might take over much of the world,” Justice Elena Kagan wrote for the court.

Trademark Or Not A Trademark

Kagan’s opinion described why the Bad Spaniels use of Jack Daniel’s trademarks constituted use as trademarks, and also said that until this case, the “test has applied only to cases involving ‘non-trademark uses.’” But it left open a lot of questions as to whether a use is serving as a source-identifier.

Trademark attorney Eric Perrott of Gerben Perrott PLLC said courts are now going to argue about “when is something just kind of something stuck on the front of a t-shirt or on the front of the dog toy, and when is it a trademark.”

Trade dress—such as shapes of bottles like Jack Daniel’s—will be “part of the next battleground,” he said. The “next thing people will try to unpack here” is when someone using elements of trade dress is “trying to adapt it” as its own source identifier, or just using it in a non-source-identifying manner, he said.

Intellectual property law professor Alexandra J. Roberts of Northeastern University agreed.

“One thing that we can take from it is the importance of this question,” Roberts said. “How are they using the thing that they’re accused of using? Are they using it in a trademark way or not in a trademark way? Because the court is very clear here that if you’re using it as a trademark, then you don’t get to avail yourself of the Rogers test.”

IP Professor Lisa Ramsey of the University of San Diego said Rogers could still apply to a product like VIP’s toy or a shirt, as long as the parodist isn’t claiming trademark rights or using the spoof as a source identifier.

Parody’s Path

The high court noted that in past cases involving purported parody, lower courts have declined to apply Rogers. It pointed to two other pet-pun disputes: a Fourth Circuit case involving a Chewy Vuiton dog chew toy and a New York district court case involving Timmy Holedigger pet perfume. Neither applied Rogers, but both ruled for the defendants after finding no likelihood of confusion.

“If you’re going to put a product out there and get a trademark on it and say, ‘This is my source identifier,’ you’re gonna have to show that your parody is strong enough that people aren’t confused,” said IP professor Deven Desai of Georgia Tech University.

Nevertheless, Tushnet said, it’s “way too early to tell” if and how the ruling will reverberate across the broader realm of trademark infringement decisions.

Kagan explicitly wrote that the “opinion is narrow.” That limited nature, combined with her assertion that no court had previously made the error it was reversing, may blunt the decision’s impact, some said. Roberts said each circuit will likely “continue to do what it has been doing.”

“There was a lot of speculation about what this could mean for the future of parody uses, the expressive works and the different tests applied and how the first amendment will be weighted,” Roberts said. “And we really get nothing on any of that, so it doesn’t rock the boat a whole lot.”

It’s still difficult to bring a case against a party with a parody defense, but this “changes the equation” so “at least you have got a shot now,” Neal, Gerber & Eisenberg LLP IP attorney Michael Kelber said.

Tushnet hoped courts would take note of a concurrence by Justice Sonia Sotomayor, joined by Justice Samuel Alito. It stressed that consumer surveys could be unreliable in parody cases, as they can turn on lay consumers’ legal opinions. Tushnet said such surveys often can be unhelpful because they’re “manipulable” and often answer the wrong question.

Rogers will likely continue to be invoked going forward because “trademark owners will keep trying to sue people for saying things about them,” she said.

“I had hoped for a different outcome,” Tushnet said, “but the court did at least emphasize that it was trying to make a narrow decision and not to get rid of Rogers v. Grimaldi entirely.”

The case is Jack Daniel’s Props. Inc. v. VIP Products LLC, U.S., No. 22-148, decided 6/8/23.