Bloomberg Law
March 23, 2023, 9:10 AM

Justices Eye Speech-Trademark Test Revamp in Jack Daniel’s Case

Kyle Jahner
Kyle Jahner
IP Reporter

The US Supreme Court seems poised to use a case centered on a pun-laden, Jack Daniel’s bottle-shaped “Bad Spaniels” dog toy to rein in a test for trademark use in expressive works—though the exact way they might do so isn’t clear.

The justices during oral arguments Wednesday appeared to reject VIP Products LLC’s bid to leave the balancing test largely undisturbed as a broad gatekeeper before courts analyze the likelihood of consumer confusion for products riffing on others’ marks.

But they also strongly pushed back against the effort of Jack Daniel’s Properties Inc. to shunt the First Amendment concerns aside in a bid to nullify the test—and VIP’s win at the US Court of Appeals for the Ninth Circuit vacating a trademark infringement verdict.

The Rogers test, as it’s known, allows trademark use in an expressive work without the owner’s permission if it’s artistically relevant and not explicitly misleading. Created by the Second Circuit’s 1989 decision in Rogers v. Grimaldi, the test has been adopted by several circuits without being explicitly rejected by any.

The case carries major implications regarding when brands can be referenced in expressive works like movies and art, or in consumer products like dog toys. Some friend-of-the-court briefs argued that the expressive-commercial distinction should decide whether Rogers applies. When justices suggested that as a way to narrowly rule and cabin Rogers, however, both sides pushed back.

“I will agree with Jack Daniel’s counsel on one thing,” VIP Products attorney Bennett E. Cooper of Dickinson Wright LLP told the court. “A distinction between utilitarian goods and expressive works is a nonexistent standard.”

As the court grappled for a foothold on a moderate solution, both sides cited the threat to free speech or to trademark rights. The US Justice Department also agreed with Jack Daniel’s that the test is wrongheaded, but also suggested the high court instruct the district court to more closely consider elements of parody in the dog toy.

“I think the sense is they’re trying not to have to overtly overrule Rogers, and find middle ground,” IP attorney Barry Werbin of Herrick, Feinstein LLP said, suggesting the court indicated it might try to develop a modified likelihood of confusion test to apply to parody in the early stages of litigation.

Tiffany D. Gehrke of Marshall, Gerstein & Borun LLP said the questions “suggested they want to avoid modifying Rogers if not required to do so in this case,” but also noted the justices contemplated the possibility that Rogers didn’t apply to the dog toy, which would narrow the test’s reach from the Ninth Circuit’s application.

READ MORE: Supreme Court Ponders Jack Daniel’s Dog Toy Trademark Case

First Amendment Combat

Jack Daniel’s attorney Lisa S. Blatt of Williams & Connolly LLP argued the Rogers test flies in the face of the Lanham Act by allowing trademark use that confuses consumers in a way not compelled by the First Amendment. She said Rogers as applied means making a joke offers a free license to infringe brand-owner rights.

“‘HAHAHA’ is not a standard under the Lanham Act,” she said. “It’s whether it’s confusing as to its source.”

She may have overplayed her hand at times, some attorneys said. She noted trademarks predate the First Amendment, calling them “ancient property rights that inherently restrict speech to protect investment in goodwill and prevent confusion.”

“She was a little too rough in places,” IP attorney William J. Thomashower of Pryor Cashman LLP said.

Those arguments prompted Justice Samuel Alito to say he was “concerned about the First Amendment implications of your position.”

Justice Sonia Sotomayor said she had “hesitation doing away with the Rogers test” without knowing the likelihood of confusion test was sufficiently flexible, and noted that while Rogers was judge-made, the likelihood of confusion factors were as well.

Blatt dismissed concerns from Thomas and others that neutering Rogers would unleash a flood of bullying of protected speech, stating that the test itself wasn’t applied outside of movie titles until 2003.

Justice Department attorney Matthew Guarnieri said costs of litigating are not a compelling reason to “displace the statutory standard” with something not based on trademark law.

“You don’t get a special off-ramp at the beginning of the litigation just because it might be expensive to litigate the defense you’d like to raise,” he said.

Justice Ketanji Brown Jackson also got into a back and forth with Blatt, asking why the Lanham Act would apply if an artist wasn’t using a mark as a source identifier. She asked “What’s wrong with that,” to which Blatt replied “a lot.”

Blatt—who had earlier said to Justice Clarence Thomas that the Lanham Act is concerned with “consumer confusion over origin, source or sponsorship"—told Brown, “confusion has nothing to do with designation of source.” She pointed out a dilution case involving a pornographic video, “Debbie Does Dallas,” that was found to tarnish Dallas Cowboys cheerleader trademarks.

“That’s just silly talk,” trademark law professor Mark McKenna of UCLA said. “Everybody in trademark law knows ‘source’ includes ‘sponsorship or affiliation.’”

READ MORE: Justices Get Creative in Jack Daniel’s Dog Toy Hypotheticals

Parody of an Argument

Much discussion addressed the application of Rogers to parody as the justices tried to figure out how to block confusion without chilling speech by enabling trademark litigation that often includes surveys to gauge consumer perception.

Cooper’s opening argument defending the dog toy concluded, “The First Amendment is not a game show where the result is ‘Survey says: Stop talking.’"

Thomas asked Cooper for “the best textual hook for Rogers and for the off-ramp” from the Lanham Act. Cooper said Rogers is part of an “entire edifice built under the Lanham Act to try to reconcile that with First Amendment text,” including fair use and nominative fair use.

The justices recognized consumers are often amused, not confused, by parody—which means there’s no infringement nor need to worry about difficult First Amendment questions, IP attorney Jeffery A. Handelman of Crowell & Moring LLP said in an email.

But Justice Elena Kagan suggested the dog toy might not merit that treatment. She asked Cooper, “What is there to it, what’s the parody here?”

“Maybe I just have no sense of humor,” she added, drawing laughs. Cooper said the parody is of brands taking themselves too seriously, but Kagan pushed back that VIP similarly mocks various other brands, regardless of any perceived self-seriousness.

“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?” Kagan said.

Before Kagan’s questioning, Jackson had addressed Cooper’s argument by asking whether, as the Ninth Circuit applied Rogers, any product could be deemed outside the protection of the Rogers test—even a dog toy that exactly replicates a Jack Daniel’s bottle, with no dog puns. Cooper said that’d be explicitly misleading.

A problem with the focus on parody, UCLA’s McKenna said, is that Rogers addresses more than that. McKenna, who joined a brief supporting VIP, said several justices “seemed to understand the stakes of not having a prophylactic rule.” But he worried they’d merely carve out a path for parodies to escape, when Rogers should shield a much broader swath of trademark use that warrants First Amendment protection.

Overall, McKenna called the argument a “mixed bag,” and said the justices’ questioning suggested the Rogers test would at least be altered, making him “hope for something narrow.”

“At the end of the day, it made me wish they’d never taken the case. They could do a lot more harm than good here,” McKenna said. “For the Supreme Court to come around and say ‘Rogers is wrong’ when every circuit that has decided the issue has adopted some form of it would be pretty incredible.”

The case is Jack Daniel’s Properties Inc. v. VIP Products LLC, U.S., No. 22-148.

To contact the reporter on this story: Kyle Jahner in Washington at

To contact the editors responsible for this story: Adam M. Taylor at; Jay-Anne B. Casuga at

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