Unpacking The Supreme Court's Decision In Jack Daniel's Properties, Inc. V. VIP Products LLC

• Published date: 15 June 2023
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Jenner & Block
• Author: Ms Susan J. Kohlmann, Jacob Lincoln Tracer, Allison Douglis, Kara Brandeisky and Haley Tuchman

Last week, the Supreme Court issued its decision in Jack Daniel's Properties, Inc. v. VIP Products LLC, a trademark case addressing how the Lanham Act intersects with the First Amendment. While the parties each argued for broad holdings in their briefs and at oral argument, the Court took a "narrower path" in resolving the case. It held that a dog toy evoking a bottle of Jack Daniel's was not entitled to special First Amendment protection but left open the larger question about whether and when expressive works like films, songs, and books can claim First Amendment protection from trademark claims. The Court's decision was unanimous, but concurring opinions warned about the use of surveys in trademark litigation and the future of the "Rogers test" for uses of marks in connection with expressive works.

Background

This case concerned a dog toy manufactured by VIP Products LLC (VIP), labeled "Bad Spaniels," which was designed to mimic a bottle of whisky produced by Jack Daniel's Properties, Inc. (Jack Daniel's). VIP sought a declaratory judgment that its Bad Spaniels toy did not infringe or dilute Jack Daniel's trademarks, and Jack Daniel's counterclaimed.^] After a bench trial, relying heavily on survey evidence, the district court found that VIP was liable for trademark infringement and dilution.²

The Ninth Circuit reversed, holding that the district court should have applied the Rogers test to the infringement question and that VIP was entitled to an exception to dilution claims for "noncommercial use" of a mark.³ The Rogers test stems from the Second Circuit's seminal decision in Rogers v. Grimaldi, where the court held that to accommodate First Amendment concerns, the Lanham Act "should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression."^] As a result, trademark liability under the Rogers test attaches only when the use of a trademark has no artistic relevance to the underlying creative work or when its use is explicitly misleading as to the source or content of that work.⁵ Every circuit to consider the issue has adopted the Rogers test, but the Supreme Court had never considered it before now.⁶

On remand, the district court applied the Rogers test and found that VIP had not infringed Jack Daniel's mark.⁷ Jack Daniel's appealed, and the Ninth Circuit affirmed.⁸ The Supreme Court then granted certiorari as to both trademark infringement and dilution.⁹

The Court's Decision

In its briefing and at oral argument, Jack Daniel's urged the Court to hold that the Rogers test has no foundation in either constitutional or statutory law. However, the Court explicitly declined to rule on the general merits of the Rogers test, holding narrowly instead that the Rogers test or "any threshold First Amendment filter" does not apply when the trademark is used "as a designation of source for the infringer's own goods."¹⁰ The Court explained that the "primary mission" of the Lanham Act...