The Legal Brief

Supreme Court Addresses the Interplay of Trademarks and Parody

June 12, 2023

By: Joshua A. Claybourn

Recently, the Supreme Court issued a ruling in the case of Jack Daniel’s Properties, Inc. v. VIP Products LLC, which provides significant implications for trademark law and its intersection with the First Amendment. This landmark decision affects clients who have trademark concerns, as it provides guidance on when a trademark claim can be protected by the First Amendment.

The case involved a dog toy labeled “Bad Spaniels,” manufactured by VIP Products LLC (VIP), which was designed to resemble a bottle of whisky produced by Jack Daniel’s Properties, Inc. (Jack Daniel’s). VIP sought a declaratory judgment that its toy did not infringe or dilute Jack Daniel’s trademarks, which led to a counterclaim by Jack Daniel’s. The central question in the case involved the application of the Rogers test, a framework that balances the public interest in avoiding consumer confusion against the public interest in free expression.

The Supreme Court's ruling has several key takeaways:

1. The Narrow Scope of the First Amendment's Protection: The Court ruled that a threshold First Amendment filter, such as the Rogers test, does not apply when the trademark is used as a source identifier for the infringer’s own goods. This means that if a product is using another’s trademark in a way that might cause confusion about the product’s origin, it will not be protected under the First Amendment.
2. The Relevance of Confusion: The Court emphasized that if a case does not plausibly allege a likelihood of confusion, it should be dismissed under Federal Rule of Civil Procedure 12(b)(6). This underscores the importance of demonstrating potential confusion in any trademark infringement claim.
3. No Special Exemption for Parodic or Humorous Use: The Court also held that the “noncommercial use” exception to federal dilution claims does not apply solely because a use has a humorous or parodic purpose.

While the Court’s decision provided some clarity, it also left many questions unanswered. Most notably, it did not make a broad ruling on the Rogers test, leaving open the question of how and when expressive works like films, songs, and books can claim First Amendment protection from trademark claims.

Moreover, the concurring opinions raise further considerations. Justice Sotomayor, joined by Justice Alito, cautioned that courts should treat the results of surveys with particular care in the context of parodies and other First Amendment concerns. Meanwhile, Justice Gorsuch, joined by Justices Thomas and Barrett, expressed skepticism about the validity of the Rogers test, indicating that this issue is still very much in play.

For our clients, these implications underscore the need to think carefully about how and where their trademarks are used, especially in the context of expressive works or parodies. It also highlights the importance of understanding the potential for consumer confusion in these contexts, as well as considering the potential for dilution claims even in the face of parodic use.

As always, our team is here to guide you through these complex legal issues and help you understand how this and other court decisions may affect your business.