The Supreme Court unanimously sided with Jack Daniel’s in the much-anticipated trademark case pitting trademark protection against parodic products. However, SCOTUS did not reach a final conclusion on whether VIP Products’ Bad Spaniels dog toy will live to see another day as a parody of the Jack Daniel’s whiskey bottle. Instead, the Court focused on the legal framework used for analysis of parodic products and remanded the case back to the lower courts.
In particular, SCOTUS noted that a product that uses a trademark as a source-designating symbol is the “heartland” of the Lanham Act and should not be entitled to the First Amendment offramp of the Rogers test. The relevant inquiry should be the standard likelihood-of-confusion analysis, in which the parodic nature can be taken into account.
In March, we covered the oral arguments made by both parties and the government. The Bad Spaniels dog toy joined VIP Products’ line of Silly Squeakers toys in 2014. The squeaky bottle mimics the Jack Daniel’s Old No. 7 whiskey bottle in appearance, but it replaces key phrases with dog-themed scatological jokes. Jack Daniel’s claims that VIP Products has committed trademark infringement (based on a likelihood of consumer confusion) and trademark dilution (based on a harm to reputation).
The central question before the Supreme Court was whether the Rogers test for First Amendment protection of expressive works applies to an artistic/humorous trademark use, which would trump the standard likelihood-of-confusion analysis. Second, SCOTUS examined whether the parodic use qualified as “noncommercial” and, therefore, precluded a dilution by tarnishment claim.
In the unanimous opinion penned by Justice Elena Kagan, the Supreme Court emphasized that this was only a “narrow” decision. The Supreme Court concluded that the likelihood-of-confusion analysis (rather than the Rogers test) should apply to commercial products that use “trademarks as trademarks.” The dog toy is using “Bad Spaniels” as a source identifier, which is the definition of a trademark. Accordingly, the standard Lanham Act-based test should be used, rather than the Rogers test’s unique “shortcut to dismissal” that applies to expressive works. Similarly, the “noncommercial” exclusion to a dilution claim does not apply to marks that are source-identifying.
Although the Supreme Court agreed with Jack Daniel’s analysis of the law, it is not a total loss for VIP Products. Justice Kagan specifically wrote that Bad Spaniels’ parodic nature will still be considered in the likelihood-of-confusion, multi-factor analysis in the lower courts. The primary purpose of this opinion was not to decide on the underlying facts of Jack Daniel’s versus Bad Spaniels, but rather to prevent the Rogers test from expanding further and to clarify that a trademark being used in connection with a commercial product will be squarely governed by the Lanham Act instead of the First Amendment.
In addition to the 9-0 opinion, two brief concurrences provide some additional insight into concerns of the justices going forward. Justices Sonia Sotomayor and Samuel Alito wrote a cautionary note about consumer surveys. Because Jack Daniel’s had relied heavily on the results of a survey that indicated consumer confusion, the concurrence warned lower courts to examine the methodology of these surveys with a keen eye. Without careful scrutiny, powerful brands could use surveys as a tool for “silencing a great many parodies.”
Next, Justices Neil Gorsuch, Clarence Thomas, and Amy Coney Barrett reiterated that the Rogers test is not overruled within its appropriately cabined context (that is, primarily expressive works or titles). Nevertheless, Justice Gorsuch indicated some discomfort with the Rogers test and recommended that the lower courts should handle it “with care.”
The narrow grounds of the Supreme Court’s opinion make it more difficult to anticipate whether this decision will drastically change the commercial landscape. While the big companies that wrote amicus briefs in favor of Jack Daniel’s may be celebrating this victory today, hope is not lost for parodists. Even though the Rogers test will no longer be an easy escape route to evade litigation for commercial products, parodists can take comfort that a likelihood-of-confusion analysis may still weigh in their favor. As long as parodic products are not committing trademark law’s “cardinal sin” of confusing customers as to source, then these products may remain on the shelves.