June 11, 2023

Supreme Court Holds in Favor of Jack Daniel’s in Trademark Case Over a Dog Toy

June 11, 2023

As we wrote in April 2023, the Supreme Court recently heard a case involving Jack Daniel’s and a poop-themed dog toy made by VIP Products. On June 8th, the Court held unanimously in favor of Jack Daniel’s.

Unlike the approach of the Ninth Circuit Court of Appeals, the Supreme Court rejected the applicability of the Rogers Test in this instance. Writing for the majority, Justice Elena Kagan stated that the Rogers Test does not apply in cases where the accused infringer has commandeered another party’s trademark in order to designate the source of its own goods. In context, this means that because VIP used the trademarks in Jack Daniel’s bottle and graphics in a manner that would allow a consumer to identify its dog toy as coming from a specific manufacturer, the Rogers Test cannot be used. 

The Rogers Test is reserved for artistic expression. It raises the burden for a plaintiff, as non-commercial, artistically relevant, and not explicitly misleading works receive heightened First Amendment protection. In this case, however, VIP’s use of Jack Daniel’s marks on its toy was not considered expressive as VIP uses its version of Jack Daniel’s trademarks in order to “identify and distinguish” VIP’s toy from competitors’ and to signal the source of that toy to consumers. Therefore, in line with the logic employed in normal trademark infringement cases, the question becomes whether VIP’s asserted mark as used on its toy likely would confuse consumers into believing that it comes from Jack Daniel’s itself, so as to infringe upon Jack Daniel’s marks. 

VIP’s contention that its references to Jack Daniel’s marks should receive protection as a parody triggered analysis by the Court along three separate lines. First, the Rogers Test does not apply to parodies when the infringer utilizes the protected content to identify the source of the goods being sold: that is, when the symbols “both function as a mark and have parodic content.” Second, while parodies commonly qualify for the Lanham Act’s “fair use” exclusion, that rule does not apply when the referenced content serves “as a designation of source for the [infringer’s] own goods or services.” But third, because brands infrequently engage in “self-mockery,” the parodic nature of a reference to protected marks might decrease the likelihood that consumers would mistakenly believe that the parody stemmed from the same source as the referenced marks.

In keeping with that third point, and because the Rogers Test did not apply, the Court remanded the case to the lower courts for consideration of whether consumers would likely believe that the Bad Spaniels toy in fact came from Jack Daniel’s. 

On that question, the District Court previously cited a survey that suggested confusion by 29% of potential purchasers, in its holding in favor of the distiller. In a concurring opinion, however, Justice Sonia Sotomayor, joined by Justice Samuel Alito, cautioned against allowing such surveys to “completely displace other likelihood-of-confusion factors,” as a survey’s outcome may depend in part on consumers’ misunderstanding of the specifics of intellectual property law. 

Because the Court avoided deciding on the viability of the Rogers Test in its chosen, narrow context, the thorny issues involving the First Amendment discussed in our April blogpost were left unaddressed. Justice Neil Gorsuch, joined by Justices Clarence Thomas and Amy Coney Barrett, penned a concurring opinion highlighting this uncertainty and potentially leaving the door open for the Court to narrow the applicability of the Rogers Test yet further in the future. 

If you’re interested in seeking guidance on issues relating to trademark infringement, learn more about Ziliak Law’s Trademarks & Advertising Practice.

Article by David Griffith

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