“Whether the Rogers test gets the question exactly right, [or] whether there should be a better test, you’re leagues away from that. It’s a standard commercial product, not a film or political t-shirt…. You’re using this as a source identifier.” – Justice Kagan to VIP’s counsel
At today’s hearing in Jack Daniel’s v. VIP Products, the U.S. Supreme Court Justices suggested to both sides that there might be an easier way out on the facts of this particular case than either party is proposing, but weighed the need to overturn the Second Circuit’s test in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which some of the Justices characterized as injecting unnecessary confusion.
Though the Court seemed equally concerned about retaining a way for defendants making clearly parodic use of a mark to get out of litigation quickly, which Rogers is intended to do, they questioned both sides about why in this case they couldn’t either find for Jack Daniel’s by just saying that VIP is clearly using a source identifier on a commercial product, or remand to the district court to say they failed to properly weigh the parody or proximity factors of the product, for instance. Overall, the Justices seemed skeptical that the product in question represents a non-commercial use.
Jack Daniel’s petition was granted last year. The company is seeking clarification on whether the First Amendment protects VIP Products, LLC, a maker of dog poop-themed toys that made humorous use of Jack Daniel’s trademarks for commercial purposes, against claims of infringement and dilution.
In its ruling in 2020, the Ninth Circuit said VIP’s dog toy mimicking a Jack Daniel’s whiskey bottle was an expressive work entitled to First Amendment protection, reversing the district court’s initial holding that the toy infringed and diluted Jack Daniel’s marks and remanding the case back to the district court for a determination on the merits of the infringement claim. The High Court denied Jack Daniel’s petition in January of 2021, and the U.S. Court of Appeals for the Ninth Circuit “summarily affirmed” the district court’s summary judgment ruling for VIP on remand, after which Jack Daniel’s appealed again.
Jack Daniel’s: Confusing is Confusing, Even in Parody
Lisa Schiavo Blatt of Williams & Connolly argued for Jack Daniel’s, explaining that the Rogers’ test was invented for movie titles and is not aptly applied here, and should ultimately be scrapped. “There’s no way to keep Rogers and be faithful to the text,” Blatt said. The Lanham Act has no exceptions for expressive works, and “artistic relevance”, which is articulated in the Rogers test, has nothing to do with confusion, Blatt said.
Justice Kagan pressed Blatt on this point, noting that there are a lot of other cases that “look really different” than this one. While the expressiveness of VIP’s product can be debated, there are other cases where there is a clearly expressive meaning and that don’t involve an ordinary commercial product like a dog toy. While Blatt conceded that Jack Daniel’s could win the present case on a narrower argument, she said that there would remain confusion going forward about the application of Rogers to expressive works if the Court takes that approach.
Justice Jackson and Blatt also sparred a bit on Jackson’s question about why they couldn’t simply focus on use of a mark as a source identifier as a threshold question. Blatt explained that confusion has nothing to do with designation of source, referencing the movie Debbie Does Dallas as an example of confusion without using a source identifier, and accusing Jackson of “making up stuff.” She later added: “The other side doesn’t want to talk about the poisonous and pornographic things that can be done when you infringe someone else’s trademark.”
Justice Thomas also asked Blatt what her response would be to VIP’s argument that the Lanham Act presents difficulties for the “not so well-heeled defendant,” to which Blatt replied: “The consequence of having a property right is that owners are going to protect them.” And as to First Amendment concerns, “by definition, trademarks restrict speech,” Blatt said.
Justice Sotomayor expressed hesitancy to do away with Rogers, explaining that it originated from the problem of the Lanham Act’s likelihood of confusion test not being sufficiently flexible in some cases, noting that her view is that it’s a contextual analysis. “I see the Rogers test [and all similar circuit tests] saying there are certain contexts of use that are less likely or not likely to confuse,” Sotomayor said.
Sotomayor presented the hypothetical of an activist who takes a political party’s animal logo (an elephant or a donkey) where the animal looks drunk and the shirt says, “It’s time to sober up America.” They wear that proudly in Court or at a protest. The activist then sells the shirts on Amazon and the political party gets a consumer survey showing that 15% or 25% of people think the activist needs the party’s permission to copy the logo. Would that require a full trial under the eight-factor test set forth for finding likelihood of confusion in Polaroid Corp. v. Polarad Elecs. Corp, asked Sotomayor?
Blatt replied that the relevance in that scenario is not whether one gets the joke but whether one gets that someone other than the brand is making the joke. However, she also underscored the importance of consumer surveys as capturing the real-world marketplace, since a judge isn’t going to represent the purchasing public. Sotomayor seemed to disagree with this approach because, even if 75% of people surveyed thought permission should be obtained, “at some point, it’s a political statement, it has First Amendment rights…and those people may be wrong on the law. You don’t need permission to make a political joke,” she said.
Blatt also distinguished her case from the “other dog toy case,” Louis Vuitton Malletier S.A. v. Haute Diggity Dog LLC, 507 F.3d 252 (4th Cir. 2007), or “Chewy Vuitton,” where the court said it was immediately struck by how different the products were, while in the present case, the court was immediately struck by how similar they were. There were nine virtually identical things that were the same between the products here, and Jack Daniel’s makes dog products and sells licensed merchandise in the same markets, Blatt said.
Government: We Don’t Need Rogers
Arguing for the U.S. Government, Matthew Guarnieri, Assistant to the Solicitor General, said that “a lot of the intuition driving the questions in the hypotheticals is that reasonable people aren’t likely to be confused. That intuition is fully captured by the likelihood of confusion test.” Guarnieri said the Rogers test “is different” in that it says defendants should be allowed to engage in infringing behavior even if it is likely to confuse, “and that can’t be squared with the Lanham Act itself and is not compelled by the First Amendment.”
In response to Justice Thomas, Guarnieri said the Government’s view is that “Rogers was incorrectly decided and the standard is inconsistent with the text of the Lanham Act.” He dubbed it an antecedent test that an infringement plaintiff has to satisfy to even invoke the Lanham Act. “You have to get over Rogers and then also prove likelihood of confusion, and that’s just substantively inconsistent with Lanham Act,” Guarnieri said. He also noted that Rogers was decided under a predecessor version of the Lanham Act that didn’t even contain the likelihood of confusion standard that should govern in this case.
Sotomayor again expressed reluctance to do away with a test the Circuits have been relying on, but Guarnieri noted that many circuits have never adopted Rogers, and many of the cases that have applied Rogers involve movie titles specifically.
Guarnieri also largely dismissed First Amendment concerns and said the arguments for keeping Rogers seem to be that defendants don’t want to go through the process of demonstrating confusion isn’t likely, “and that itself isn’t a sufficient basis for maintaining Rogers.
VIP: Brands That Take Themselves Too Seriously Are Subject to Parody
For VIP, Bennett Evan Cooper of Dickinson Wright said that iconic brands are a kind of celebrity and people are constitutionally entitled to make fun of celebrities. “Bad Spaniels is a parody playfully comparing Jack to man’s other best friend,” Cooper said. Ultimately, Jack Daniel’s complaint is about the poop-related aspects of the toy and not the use of the mark, he added. “Companies simply do not license lampoons of their own products,” so there can be no confusion.
Cooper noted the SG’s office agrees that the multi-factor test that usually applies does not work for parodies and that the district court misapplied the factors here. “A test that convicts pure parodic speech is broken,” he said. If the Court agrees with the SG, it should provide more guidance and a more focused version of the general test to address parodies. He specifically suggested the following questions:
- Can the court reasonably perceive the product’s parodic character?
- What is the proximity and competitiveness of the goods?
- Does the parody otherwise fail to differentiate itself from the mark?
The Justices pressed Cooper on the claim that VIP’s product is not a commercial use, and Justice Kagan seemed particularly stumped by the message of the parody. Cooper said that VIP’s intention is to make fun of brands that “take themselves seriously,” like Jack Daniel’s, but Kagan noted that would seem to authorize use of the marks of almost any large company. She also challenged Cooper on VIP’s claim that its use is non-commercial. “Whether the Rogers test gets the question exactly right, [or] whether there should be a better test, you’re leagues away from that,” Kagan said. “It’s a standard commercial product, not a film or political t-shirt…. You’re using this as a source identifier.”
Cooper answered on this point to both Kagan and Thomas by saying that the test isn’t whether you can buy or sell the product, but involves a non-commercial speech distinction. “It’s only commercial if it does no more than propose a transaction,” Cooper said, explaining that if the parody product offered an actual bottle of poo it would be commercial. “It’s simply making a joke, and the joke is non-commercial.”
Cooper also conceded during his argument that the Rogers test’s reference to “artistic” relevance doesn’t get it quite right. “I think the word “artistic” could be stricken from the copy of Rogers,” Cooper said. “I think it’s really a matter of relevance rather than artistic relevance.”
Weighing in on the arguments, Barry Werbin of Herrick, Feinstein LLP said the Justices “likely may be seeking a middle ground by applying traditional likelihood of confusion factors to parodic works, but placing more or less weight on specific factors in the context of parodic goods.” He added that Blatt argued on rebuttal that “’non-commercial’ speech does not involve buying and selling and should be so limited to that scenario” and that she also “denounced the government’s refusal to affirmatively support the USPTO’s historical assessment of parody under the likelihood of confusion factors, with no special exception for parody.”
JP Ciardullo of Foley said that “the Court is struggling with the fact that it may be hard to fashion a rule to distinguish which kinds of uses of a company’s trademarks (if any) should be entitled to enhanced First Amendment protection and which should not be. Ultimately the Justices asking questions at today’s hearing seemed convinced that a reasonable consumer’s confusion and perception – rather than use of another’s trademark in the abstract – should govern the analysis, but debated whether any test could realistically be employed to address that question in the context of a motion to dismiss at the outset of the case to avoid the need for protracted litigation.”
“Many of the Court’s questions seemed to favor a common-sense approach to trademark parody cases, said Jeff Handelman of Crowell & Moring. “The Justices recognized that consumers often are amused by a parody but not confused by it. The very nature of the parody – which ‘conjures up’ the original but also pokes fun at it – often avoids confusion as to source or sponsorship. Absent such confusion, there is no infringement under the Lanham Act and therefore no need to reach difficult constitutional questions related to the First Amendment.”
Finnegan’s Mark Sommers explained that “the contention that Rogers is prerequisite or ‘screen’ before reaching the Lanham Act, that argument seemed to carry little sway. Simply street-smarts governed many exchanges, as irrespective of the expressive use at issue, if it creates consumer confusion, then it is not protected speech. Talk of remand also permeated the hearing, suggesting that the Supremes might remand the case directing the trial court to determine if the adequate weight was given to the parodic nature of the product within the existing framework of AMF Inc. v. Sleekcraft Boats (9th Cir. 1985) factors, as urged by the U.S. government.” Sommers also reiterated that the Justices “did not seem to buy that the product at issue was non-commercial.”