It is not often that a U.S. Supreme Court Justice holds up a dog toy when reading a decision, but Justice Elena Kagan, in deciding against the dog toy maker in Jack Daniel’s Properties, inc. v. VIP Products LLC¹, did just that, to raucous laughter in the courtroom.

The Court’s 9-0 decision overturned the 9th Circuit ruling that threw out Jack Daniel’s challenge to the dog toy – which resembles a bottle of Jack Daniel’s “Old No. 7.” Whiskey and is called “Bad Spaniels” – on the ground that the squeaky toy was protected by the First Amendment. Both “Jack Daniel’s” and “Old No.7” are registered trademarks.

The Scope of the Decision: The decision limits the applicability of the Rogers test and makes it more difficult for creators of parody products to claim First Amendment protection, but does not reject the Rogers test entirely.  The Rogers test originated with Rogers v. Grimaldi, 875 F.2d 994, 996 (2d Cir. 1989), a case involving the film “Ginger and Fred.” The film’s name was a reference to the famous Ginger Rogers and Fred Astaire dance team, but neither was involved in its production. Ginger Rogers sued for the unauthorized use of her name in the film’s title, which she regarded as an implied endorsement. In Rogers, the Court sided with the filmmakers, holding that “the expressive element of titles requires more protection than the labeling of ordinary commercial products.”² This test has since been applied to a wide variety of expressive content, including parodies.

After a somewhat convoluted appeals process, the case arrived before the Court with two questions:

1. Is humorous use of another’s trademark as one’s own on a commercial product subject to the Lanham Act’s likelihood-of-confusion analysis, or instead entitled to heightened First Amendment protection? The Court held that the former applied.
2. Does the Lanham Act’s exclusion of dilution liability for non-commercial use of a mark shield parody in this case? The Court said no.

Justice Kagan held that the Rogers test is not applicable “when the accused infringer has used a trademark to designate the source of its own goods—in other words, has used a trademark as a trademark. ”This is arguably consistent with the Rogers test which provided protection for the movie’s title “unless the title explicitly misleads as to the source or the content of the work.” In making her argument, Justice Kagan drew parallels to other parody cases including the use of the word “Barbie” in the Aqua song “Barbie Girl”³ and the description of a suitcase as “Louis Vuitton” in the film “The Hangover Part II”.⁴  In Kagan’s view, both of those cases correctly applied the Rogers test as the trademarks in question (“Barbie” and “Louis Vuitton”) were being used as part of a larger artistic expression, rather than to identify the source of the song and film in question. The song Barbie Girl was not a source identifier, Justice Kagan said, citing the lyrics "Life in plastic, it's fantastic." She stated, "A consumer would no more think that the song was produced by Mattel" than would the Janis Joplin lyrics "Oh lord, won't you buy me a Mercedes Benz" imply that Mercedes Benz produced Joplin’s song.

The Court emphasized that the decision is narrow, and the case will go back down to the lower courts for VIP Products to get another chance at arguing that there is no likelihood of confusion between the two products. The Court stated that a parody must “conjure up enough of an original to make the object of its critical wit recognizable” but “must also create contrasts” with the original “so that its message of ridicule or pointed humor comes clear.”

For the moment, the dog toy – which in place of “Old No. 7 Tennessee Sour Mash Whiskey” says “The Old No. 2 on Your Tennessee Carpet” and in place of “40% ALC. BY VOL. (80 PROOF)” says “43% POO BY VOL.” and “100% SMELLY” – is still available for purchase.

Key Takeaways

1. The Court had the opportunity to decide whether Rogers should be allowed to survive at all, but chose to remain neutral, calling it "an issue on which this court takes no position.” As such, the Rogers test continues to allow for parodies that do not feature source indicators, are artistically expressive in nature, and do not explicitly mislead consumers. 
2. In refraining from endorsing the Rogers test, the Court has also averted potential misuses by parody product companies of trademark owner's marks and any ensuing uncertain litigation regarding what constitutes an expressive work. Notably, humor or parody itself has never automatically qualified as a defense to infringement.
3. If parody product companies have a source identifier concern, they still can assert a parody defense. This defense, however, will be incorporated within the likelihood of confusion analysis under the Lanham Act. What exactly will suffice remains unclear. What if the parody product company includes a prominent disclaimer on the accused products? The Court’s ruling did not address these and other likely questions that could be raised. District Court and Courts of Appeal judges will have to wrestle with these questions both in the Jack Daniels case as it returns to the 9th Circuit and in future parody product cases.

1. Jack Daniel’s Props., Inc v. VIP Prods. LLC, No. 22-148, 599 U. S. ____, slip op. at 8 (June 8, 2023).↩
2. Rogers v. Grimaldi, 875 F.2d 994, 998 (2d Cir. 1989)↩
3. Mattel, Inc. v. MCA Records, Inc., 296 F. 3d 894, 901 (9th Cir. 2002) ↩
4. Louis Vuitton Mallatier S. A. v. Warner Bros. Entertainment Inc., 868 F. Supp. 2d 172 (S.D.N.Y. 2012)↩