The Supreme Court issued its ruling yesterday in a trademark lawsuit between Jack Daniel’s and the seller of a dog toy resembling a bottle of Jack Daniel’s famous whiskey. In a unanimous decision, the Court reversed the Ninth Circuit and held that the “Bad Spaniels” dog toy was subject to the usual likelihood of confusion analysis applicable to most trademark infringement disputes and not the so-called Rogers test, a threshold test derived from the First Amendment to protect expressive works. The Court further held that the seller of the Bad Spaniels toy was not exempt from liability for trademark dilution simply because it sought to parody the famous whiskey.
Key to the Court’s ruling was the dog toy seller’s use of the trademarks at issue as trademarks. Jack Daniel’s owns registered trademarks in “Jack Daniel’s,” “Old No. 7,” the arched Jack Daniel’s logo, the stylized label with filigree, and the whiskey’s distinctive square bottle. The Bad Spaniels toy was approximately the same size and shape as a bottle of Jack Daniel’s, used a black label with stylized white text and a white filigreed border, replaced “Jack Daniel’s” with “Bad Spaniels” in a like font and arch, and replaced “Old No. 7 Tennessee Sour Mash Whiskey” with “Old No. 2 On Your Tennessee Carpet” in a similar graphic form. The dog toy seller further claimed to own all rights in the Bad Spaniels trademark and trade dress (the overall appearance of the toy and its packaging) and, important to the Court, used a cardboard hangtag on the toy with two product logos—one for Silly Squeakers (the name of the dog toy line) and another for the Bad Spaniels toy itself. The Court made clear that in cases such as this, where a party is using a mark for source identification, even if that party is “making an expressive comment,” such as a parody, the Rogers test does not apply and the typical likelihood of confusion analysis must be used to determine whether infringement has occurred.
The Rogers test was created to protect First Amendment interests in the trademark context. That test requires dismissal of a trademark infringement claim unless it can be show that the challenged use of a mark “has no artistic relevance to the underlying work” or “explicitly misleads as to the source or the content of the work.” However, courts adopting the Rogers test have been careful to apply it only in cases in which a trademark is used not to designate source but solely to perform some other expressive function. In cases where trademarks are used to designate source, courts have routinely applied the likelihood of confusion analysis. Thus, the Court’s ruling today seemingly affirmed the historic application of the Rogers test and rejected the Ninth Circuit’s attempt to expand it.
Regarding the issue of trademark dilution, the Court found that the Ninth Circuit had erred in finding that the dog toy seller was shielded from liability simply because the Bad Spaniels toy parodied or conveyed a humorous message about Jack Daniel’s. The Court pointed out that the fair use exclusion, codified in 15 U.S.C. § 1125(c)(3)(A), specifically states it does not apply when the use at issue is “as a designation of source of the person’s own goods or services.” Thus, the Court found that, because the seller used the challenged marks as source identifiers, it could not benefit from the fair use exception.
Overall, the Court made clear that its ruling was narrow and limited only to holding that (a) the Rogers test does not apply when the challenged use of a mark is as a mark, a type of use that does not receive special First Amendment protection; and (b) the fair use exclusion does not shield parody or other commentary when its use of a mark is similarly source-identifying. However, in a concurring opinion authored by Justice Gorsuch and joined in by Justices Thomas and Barrett, the justices advised lower courts to handle Rogers “with care” and hinted that they were open to reconsidering the case in its entirety in the future.