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Is Trademark Protection Going to the Dogs?
The Ninth Circuit held in VIP Prods. LLC v. Jack Daniel's Properties, Inc., 953 F.3d 1170 (9th Cir. 2020), that VIP's "Bad Spaniels" dog toy mimicking the appearance of a Jack Daniels whisky bottle was protected expression under the First Amendment, such that Jack Daniels' infringement claim had to be assessed under the rigorous standard set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Under Rogers, Jack Daniels' infringement claim could proceed only if the distiller showed that VIP's use of the Jack Daniels' trademarks and trade dress either: 1) is not artistically relevant to the toy; or 2) explicitly misleads consumers as to the source or content of the toy. Following a remand and then summary affirmance by the Ninth Circuit, No. 21-16969, 2022 WL 1654040 (9th Cir March 18, 2022), the Supreme Court granted certiorari on November 21, 2022 to consider the principal question whether humorous use of another's mark on a commercial product should be assessed under Rogers or the traditional multipart test of likelihood of confusion. (The case also raises issues of trademark dilution not directly addressed here.)
After two visits to the district court, two stops in the Ninth Circuit and now a visit to the Supreme Court, Jack Daniels certainly has been dogged in pursuing its claim. The case itself marks a considerable expansion of the Rogers test, which, until now, had been applied only to familiar expressive works, such as movies or music, not mundane consumer goods. Rogers itself concerned the Federico Fellini film, Ginger and Fred, in which the title characters are Italian impersonators of Fred Astaire and Ginger Rogers. Courts have since expanded it to cover titles and content of other similarly expressive works — such as songs, paintings, photographs. But no further. As explained in Univ. of Alabama, Bd. of Trustees v. New Life Art, Inc., 683 F.3d. 1266 (11th Cir. 2012), which in many respects is on all fours with Jack Daniels, the Rogers test was fairly applied to defendant's paintings and prints (i.e., traditionally recognized artistically expressive works) of University of Alabama sports. Id. at 1278-79. However, the court declined to extend First Amendment protection to the artist's "depiction of the University's uniforms on 'mini-prints, mugs, cups … or any other mundane products.'" Id. at 1279-82.
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