INTA Asks Supreme Court to Define “Expressive Works” as Applied in the Rogers Test

New York, New York—January 27, 2023—The International Trademark Association (INTA) has filed an amicus brief in the United States Supreme Court in Jack Daniel’s Properties, Inc. v. VIP Products, LLC, No. 22-148, marking the Association’s fifth amicus brief in this long-running dispute. The case involves the balancing of interests between the First Amendment and trademark law in the context of a dog toy incorporating Jack Daniel’s trade dress and marks.

The Ninth Circuit held that the Jack Daniel’s trade dress and marks were used on the dog toy in a humorous way and that the use was therefore entitled to heightened First Amendment protection under the test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). The Ninth Circuit also concluded that the dog toy was a non-commercial use and thus could not constitute trademark dilution. On remand, the district court was constrained to conclude that the dog toy did not infringe or dilute the Jack Daniel’s trade dress and trademarks.

INTA’s brief emphasizes that the Rogers test was formulated in the context of an artistically expressive work—a movie title. When applied to such artistic expressions, Rogers appropriately balances the rights of trademark owners with the free speech rights of authors. Rogers, however, was not meant to apply to consumer products. The Ninth Circuit’s decision departs from the law in all other Circuits that have adopted Rogers.

INTA’s brief urges the Supreme Court to reverse the Ninth Circuit’s decision, because applying Rogers to ordinary consumer products risks eroding important protections for brand owners and trademark owners. Recognizing that the Supreme Court has never reviewed Rogers, INTA suggests that to the extent the Court does determine that heightened First Amendment protections should apply in certain circumstances, the Court should narrowly define what types of “expressive works” qualify for such heightened protections.

Specifically, INTA urges the Supreme Court to define “expressive works” as those in which expression is inextricable from the product itself. For example, a novel, stripped of all expression, would leave no product at all. By contrast, a dog toy with all expression removed, will still leave a functional dog toy. Under INTA’s definition of “expressive works” the former would qualify; the latter would not. INTA also argues that review is appropriate to clarify the noncommercial use exception to trademark dilution under the Lanham Act.

About the International Trademark Association
The International Trademark Association (INTA) is a global association of brand owners and professionals dedicated to supporting trademarks and complementary intellectual property (IP) to foster consumer trust, economic growth, and innovation, and committed to building a better society through brands. Members include nearly 6,000 organizations, representing more than 33,500 individuals (trademark owners, professionals, and academics) from 181 countries, who benefit from the Association’s global trademark resources, policy development, education and training, and international network. Founded in 1878, INTA is headquartered in New York City, with offices in Beijing, Brussels, Santiago, Singapore, and the Washington, D.C., Metro Area, and representatives in Amman and New Delhi. For more information, visit inta.org.

Media Contact: 
Elizabeth Bogner 
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