Supreme Court Limits the Rogers Test

On June 8, 2023, in a unanimous decision, the Supreme Court provided guidance on the narrow applicability of the Rogers test in the trademark context and rejected the Ninth Circuit’s broad application of the Rogers test to expressive marks.

Applicability of Rogers Test

VIP Products sells dog toys, many of which are designed to look like and parody popular beverage brands. In 2014, VIP added the Bad Spaniels toy, created to parody and evoke the distinct Jack Daniel’s bottle, to its collection. The toy mimicked the Jack Daniel’s label by replacing “Old No. 7” with “Old No. 2” and “Tennessee Sour Mash” with “On Your Tennessee Carpet.” Shortly after marketing the Bad Spaniels toy, Jack Daniel’s sent VIP a demand letter and VIP responded by bringing a declaratory judgement suit.

At the District Court, VIP argued that its Bad Spaniels toy was an expressive work, under the First Amendment and required analysis under the framework enumerated in Rogers v. Grimaldi. Under the Rogers test, if a complainant cannot show that the challenged use of the mark “has no artistic relevance to the underlying work” or that it “explicitly misleads as to the source or the content of the work,” then a trademark infringement claim must be dismissed. Rogers v. Grimaldi, 875 F.2d 944, 999 (CA2 1989). VIP contended since Jack Daniel’s could not meet either prong of the Rogers test, the likelihood of confusion issue was moot. Secondly, VIP argued that its parody of Jack Daniel’s bottle was fair use and thus did not dilute the famous Jack Daniel’s marks.

The District Court rejected VIP’s contentions, concluding that since VIP had adopted several of Jack Daniel’s distinctive features for its Bad Spaniels toy, VIP sought to use the Jack Daniel’s trademarks as source identifiers of its own trademarks. As a result, the Court did not believe that the Rogers test was applicable. Rather, the appropriate standard to consider was whether VIP’s use was likely to cause consumer confusion.

However, the Court of Appeals for the Ninth Circuit reversed the District Court’s ruling, holding that VIP’s Bad Spaniels toy was an expressive work which was subject to the threshold Rogers test. The Court of Appeals remanded the case to the District Court to determine whether Jack Daniel’s could satisfy either prong of the Rogers test.

On remand, the District Court found that Jack Daniel’s could not satisfy either prong of the Rogers test and granted summary judgment to VIP on the issue of infringement. Jack Daniel’s appealed and the Ninth Circuit affirmed.

Supreme Court Decision

The Supreme Court held that the Rogers test “does not [have merit] when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer’s own goods.” Under the Ninth Circuit’s decision, an expressive mark must be analyzed under the Rogers test and is often entitled to protection without conducting a likelihood of confusion analysis. However, this broad approach to Rogers “potentially encompasses everything because names, phrases, symbols, designs, and their varied combinations often contain some expressive message unrelated to source.” Thus, if the Supreme Court were to adopt the Ninth Circuit’s view of Rogers, it would effectively erode the protections afforded to registered trademarks by the Lanham Act.

Here, the Supreme Court concluded that VIP uses Bad Spaniels as a source identifier of its dog toy. This conclusion was aided in part by VIP’s marketing of its toys and its own admissions. While the Court noted that “[t]here is no threshold test working to kick out all cases involving ‘expressive works,’” a “trademark’s expressive message—particularly a parodic one, as VIP asserts—may properly figure in assessing the likelihood of confusion.” Ultimately, the Supreme Court remanded the case to the lower courts to determine if confusion exists.

With regard to the dilution by tarnishment claim, the Supreme Court rejected the Ninth Circuit’s broad conclusion that the noncommercial use exclusion under the Lanham Act encompasses every parody or humorous commentary. Rather, the Court narrowly held that the noncommerical use exclusion “does not apply when the use is ‘as a designation of source for the person’s own goods or services.’ In that event, no parody, criticism or commentary will rescue the alleged dilutor. It will be subject to liability regardless.”

Takeaways

When a mark is used as a source identifier, regardless of whether such use is a parody, criticism or commentary, the Rogers test and the Lanham Act use exceptions are inapplicable. In these instances, the standard is likelihood of confusion. However, the Supreme Court’s ruling still preserves the application of the Rogers test to traditional works including artistic use of trademarks in titles, art, books, music and movies.