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The crowds were out last week at the U.S. Supreme Court for oral argument in the unique trademark case of Jack Daniel’s Properties v. VIP Products involving a dog chew toy in the shape of a Jack Daniel’s bottle adorned with a purported play on the name and label design. While this case may not involve any of the hot button political issues of the day, it still drew an audience to hear arguments on novel issues relating to the interplay of the First Amendment and U.S. Trademark Act (or Lanham Act) in an arguably more purely commercial context, the resolution of which is top of mind for brand owners. At issue are the questions of whether allegedly humorous or parodic use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood of confusion analysis, or instead receives some sort of heightened First Amendment protection from trademark claims, and whether this use falls within the “noncommercial” exception to trademark dilution by tarnishment in the Lanham Act. In short, the question is whether a defendant asserting parody as a defense to alleged infringement is entitled to a First Amendment “off ramp” using an abbreviated test and thereby avoiding consideration of the full likelihood of confusion factors for trademark infringement.

Jack Daniel’s alleges that VIP Product’s “Bad Spaniels” dog toy copies Jack Daniel’s trademark and trade dress and associates its whiskey with dog poop. VIP Products asserts that the Bad Spaniels dog toy is a parody playfully comparing “Jack,” advertised as “everyone’s friend,” with “man’s other best friend.” VIP Products also asserts that Jack’s Daniel’s is not really complaining about designation of source, but about speech (the alleged parody) comparing Jack Daniel’s whiskey to “No. 2” and a “bad spaniel.” VIP argues that “companies simply do not license lampoons of their own products.”

The district court had applied a likelihood of confusion analysis and found infringement by VIP Products. The Ninth Circuit Court of Appeals reversed and remanded, finding that consideration of the Rogers v. Grimaldi test set out by the Second Circuit in 1989 was antecedent to any likelihood of confusion analysis. The Rogers test asks whether the use of mark is artistically relevant and not explicitly misleading. While several Circuits have followed Rogers, the First, Fourth, Fifth, Seventh, Tenth, and DC Circuits have not, with the Fourth, Fifth, and Seventh Circuits taking the parodic nature of the use into account under existing likelihood of confusion standards. Circuits that have followed Rogers have also typically involved cases over titles, as in Rogers, and thus more clearly artistic works and protected speech.

Jack Daniel’s argued that Rogers is atextual to the Lanham Act, but several Justices did not seem overly concerned with that argument, pointing out that the various likelihood of confusion tests in each Circuit have been judicially created as a means to assess “likelihood of confusion,” the infringement standard set out in the Lanham Act. Instead, the Court seemed more inclined to favor Jack Daniel’s position insofar as the use by VIP might be more overtly commercial. Justice Kagan in particular asked if the matter could be resolved simply be finding that this dog toy is an ordinary commercial product using a mark as a source identifier and therefore is afforded no special protection; that this case is nowhere near the “heartland” of the Rogers test. Justice Kagan also pointed out that the Circuit Courts that have adopted Rogers did so in cases with fact patterns far different from this case. On the other hand, Justice Alito was particularly skeptical that any “reasonable person” could think that Jack Daniel’s approved this use of the mark, and emphatic that the Constitution takes precedence over the Lanham Act. Similarly, Justice Sotomayor expressed “some hesitation” with doing away with the Rogers test without knowing that the likelihood of confusion test is sufficiently flexible to address these concerns.

The Solicitor General also presented oral argument, ostensibly on the side of Jack Daniel’s in arguing to do away with the Rogers test, while at the same time, arguing that the district court had not sufficiently considered the parodic nature here. Specifically, the federal government argued that Rogers was incorrectly decided and the judicially-constructed Rogers test is inconsistent with the text of the Lanham Act. It further argued that VIP Products goes too far with its position on Rogers, and under VIP’s interpretation, even behavior that is likely to confuse consumers as to source would be permitted. At the same time, the federal government’s position is that the district court committed legal error in failing to take account of the parodic nature of VIP Products’ use when applying the likelihood of confusion factors, especially in its consideration of the similarity of the marks factor. On rebuttal, Jack Daniel’s said it was “galling” for the SG not to mention the USPTO’s position in 30 years of case law which does not say anything about what the SG is proposing now.

VIP Products argued that the Rogers test is a screen that takes out all expressive works at the beginning of the analysis so one never has to get to the likelihood of confusion factors, and that even the federal government agrees that the likelihood of confusion factors do not work for parodies. At the same time, VIP Products appeared to concede that the Rogers test could use adjustment, proposing three questions as “a more focused version of the general test,” which factors VIP Products asserted are derived from relevant likelihood of confusion factors and related case law: (1) can the Court reasonably perceive the product’s parodic character; (2) what is the proximity and competitiveness of the party’s goods; and (3) does the parody otherwise fail to differentiate itself from the parodied mark?

Justice Jackson struggled with the uncertainty as to whether something is sufficiently expressive under the Rogers test, and several Justices made the often-repeated point that judges (or indeed lawyers) should not be the arbiters of artistic expression. As for the second Rogers prong – whether the use is explicitly misleading – Justice Gorsuch got VIP Products to agree that confusion factors into the Rogers test through the “explicitly misleading” inquiry. Justice Alito asked whether VIP Products agreed with the position that the First Amendment does not protect speech that is misleading or even demonstrably false; noting “[w]e wouldn’t have very much speech in this country if that were the case.” Justice Sotomayor inquired why VIP Products had claimed in its pleading that it was the owner of all rights in the Bad Spaniel’s trademark and trade dress if VIP Products was not using them as a source identifier, and Justice Alito pointed out that VIP Products had registered other purportedly parodic marks.

Justice Gorsuch seemed to be inclined to remand and find that the district court may not have given adequate weight to the fact that this is a parody in analyzing the likelihood of confusion factors. While remarking this would not be the “landslide win” it wanted, VIP Products agreed this case could be resolved under the likelihood of confusion factors in the Lanham Act as long as the Court provides more guidance as to what it means to take into account parody; this is the reason VIP Products had proposed a “stripped-down” version of the likelihood of confusion test. VIP Products maintained, however, that forcing those who make artistic or parodic use of marks – typically parties that are “punching up” – to fully litigate the question of likelihood of confusion could have a significant chilling effect on protected speech.

Justice Kagan, however, was clear in her position: “So, for me, you still have to fight against a loss.” In a humorous exchange, Justice Kagan asked: “What is the parody here? . . . Because maybe I just have no sense of humor.”  When VIP Products responded: “the parody is to make fun of marks that take themselves too seriously,” Justice Kagan doubled down, pointing out that VIP makes fun of a lot of marks; “[a]re all of these companies taking themselves too seriously?” “So you’re just saying anytime you go out after or you use the mark of a large company, it’s a parody just by definition?  . . . Because they must be – they must take themselves too seriously because they’re a big company.” “I don’t think Stella Artois takes itself very seriously.” Justice Kagan was emphatic that “this is a standard commercial product;” “I don’t see the parody;” “[y]ou’re using this as . . . a source identifier.”  “It seems like just not a First Amendment Rogers kind of case.” “A dog toy, I’m just going to say, is a utilitarian good.”

Both sides seemed to agree that the likely outcome here would be for the Court to vacate and remand to district court; the main dispute between the parties being what if any direction the Court would give the district court. Both parties also seemed to agree that an as-applied challenge on First Amendment grounds would still be available in appropriate cases. While the Court could affirm the Ninth Circuit decision, leaving Rogers to be the official law of the land, the more likely outcome, based on the arguments presented and the questioning of the Justices, would be for the Court to overrule Rogers and remand to district court with instructions to (1) consider more heavily parody when applying the likelihood of confusion factors, or (2) apply a new post-Rogers test the Court sets out for these allegedly parodic situations. A decision is expected before the summer recess begins, usually by the end of June.