U.S. Supreme Court Vacates Ninth Circuit Opinion in Jack Daniel’s Properties, Inc. v. VIP Products

Published: November 1, 2023

Margaret Duncan Loyola University Chicago School of Law Chicago, Illinois, USA International Amicus Committee

Carrie Hefte Arden Hills, Minnesota, USA International Amicus Committee

Vijay Toke Rimon P.C. San Francisco, California, USA International Amicus Committee

INTA filed an amicus brief in January 2023 in Jack Daniel’s Properties, Inc. v. VIP Products, asking the U.S. Supreme Court to reverse the Ninth Circuit’s application of the Rogers test and adopt a definition of what constitutes an “expressive work.”


VIP Products LLC (VIP) makes dog chew toys that look like a Jack Daniel’s whiskey bottle, with certain humorous revisions, such as replacing “Jack Daniel’s” with “Bad Spaniels,” and “Old No. 7 Brand Tennessee Sour Mash Whiskey” with “The Old No. 2 On Your Tennessee Carpet.”

Jack Daniel’s Properties, Inc. (Jack Daniel’s) owns federal trademark registrations for words and graphics on its whiskey bottle and the configuration of the bottle. After Jack Daniel’s demanded VIP stop selling the dog toys, VIP filed suit seeking declarations that the dog toys did not infringe or dilute Jack Daniel’s marks. Jack Daniel’s counterclaimed. VIP argued Jack Daniel’s infringement claim failed under the Rogers test, a heightened infringement standard which the Second Circuit developed to account for First Amendment interests in “expressive works,” and which had been adopted in some form by most circuit courts (including the Ninth Circuit). See Rogers v. Grimaldi, 375 F.2d 994 (2d Cir. 1989).

The District Court rejected both arguments: Because VIP used the Jack Daniel’s revised features as trademarks for VIP’s products, (1) Rogers did not apply, and the dog toys infringed; and (2) a statutory parody defense to dilution did not apply. At a bench trial, the District Court found, based on survey evidence, that consumers were likely to be confused about the source of the Bad Spaniels toy, and the toy’s “negative associations” with “canine excrement” (e.g., “The Old No. 2”) would cause Jack Daniel’s reputational harm.

The Ninth Circuit reversed and remanded, holding that Rogers applied to the infringement claim because the Bad Spaniels toy was an “expressive work” because it “communicates a humorous message.” On dilution, the Ninth Circuit held for VIP, holding that because Bad Spaniels “parodies” and “comments humorously” on Jack Daniel’s, it falls within the “non-commercial use” exclusion of the dilution statute, Title 15 U.S. Code Section 1125(c)(3)(C).

On remand, the District Court found Jack Daniel’s could not satisfy Rogers and granted summary judgment to VIP. Jack Daniel’s appealed, the Ninth Circuit summarily affirmed, and the Supreme Court granted Jack Daniel’s petition for certiorari.

Summary of Decision

On behalf of a unanimous Court decision that vacated the Ninth Circuit’s ruling, Justice Kagan’s opinion held that (1) the Rogers test does not apply when the mark is being used “at least in part” in a source-identifying way, irrespective of whether the mark is used in a work that is “making an expressive comment”; and (2) with regard to the dilution claim, as a matter of statutory interpretation, the fair use exclusion for parody in the Lanham Act applies only if the mark is not used to designate source. The Court noted that lower courts’ applications of Rogers have been to cases involving use of the marks at issue in a non-source-identifying way.

The Court explicitly deferred ruling on whether the Rogers test is ever appropriate and the breadth of the noncommercial-use exclusion. Because VIP had admitted in its pleadings and exhibited in practice that the marks on its dog toys are source-identifying, the Court concluded there was no question the Rogers test did not apply in this case, and instead the traditional likelihood-of-confusion test for trademark infringement should apply.

INTA’s Position

Post–Jack Daniel’s, future trademark litigation involving alleged expressive works likely will include increased focus on what constitutes use “as a trademark” (i.e., as a designation of source), a question typically much easier to resolve with word marks than with trade dress. The Court’s guidance on what constitutes “use as a trademark” by a defendant was somewhat limited, but it did explain that it occurs where a defendant “is trading on the good will of the trademark owner to market its own goods.” But in cases involving alleged parody or commentary of the trademark owner, the defendant must convey simultaneous, contradictory messages: that it is the original trademark owner and that it is also not. Taking the Jack Daniel’s decision at face value, Rogers ostensibly, then, cannot apply to any case (or at least few cases) involving parody or commentary since, by definition, the defendant must be using the mark or trade dress as its own source identifier (at least partly). Such a conclusion is consistent with the Ninth Circuit’s analysis in Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003), where it held that it did not need to address whether Rogers should apply to trade dress because fair use principles were sufficient to address such claims. Such a rule is also consistent with the Jack Daniel’s opinion’s analysis of the dilution parody exception. The Supreme Court’s confirmation that the parody/fair use defense is not available when using a mark as a source identifier therefore calls into question the dilution holdings in cases like Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007) and Louis Vuitton Malletier S.A. v. My Other Bag, Inc., 674 Fed. Appx. 16 (2d Cir. 2016), in which the Fourth Circuit and Second Circuit (respectively) did not preclude application of parody/fair use exception of Section 1125(c)(3). Whether the courts interpret the Jack Daniel’s decision in this or another manner remains to be seen.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

© 2023 International Trademark Association