Creative Expression vs. the Lanham Act: Six Months of Cases After Jack Daniel's

The Jack Daniel's Decision

At the core of the Jack Daniel's case last Term lay the potential for a shift in U.S. Trademark law. For over 30 years, lower courts had applied a test — called the Rogers test — to balance First Amendment interests against Lanham Act rights. In the name of free expression, the Rogers test exempted from the Lanham Act artistically relevant uses of trademarks in expressive works so long as the use was not expressly misleading. The test was first announced by the Second Circuit, but every other federal circuit court of appeals to address the issue adopted the test in some form. The result was to screen out — often at the initial stages of a case — certain Lanham Act claims against "expressive" works. But the Supreme Court had never addressed the issue. And Jack Daniel's (in a dispute over the purported parody dog toy "Bad Spaniels") asked the Court to abrogate Rogers. As I pointed out last May, after argument, the justices' questioning suggested that Rogers was unlikely to survive unscathed. See, "The First Amendment and the Lanham Act At the Supreme Court."

But the Court avoided ruling on Rogers expressly. In what it described as a "narrow" ruling, the Court side-stepped the issue "[w]ithout deciding whether Rogers has merit in other contexts." Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140, 153 (2023). Instead, it held that Rogers does not apply at all "when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer's own goods." Ibid. According to the Court, Rogers "has always been a cabined doctrine" (id. at 156) — meaningfully "confined" by the lower courts to cases "in which a trademark is used not to designate a work's source, but solely to perform some other expressive function" (id. at 154). The gating question — for the purpose of Rogers — was not necessarily whether the defendant made expressive use of the mark, but whether the defendant's use was as a mark. Because VIP Products admitted (in its pleadings) to using the accused trade dress as a mark, Rogers did not apply.