The United States Supreme Court issued its decision in a years-long dispute between Jack Daniel’s and VIP Products LLC (“VIP”) over a humorous dog toy which is intended to mimic the label of a Jack Daniel’s whisky bottle. Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. ____ (2023).
The Court’s opinion focused on use of a mark as a source-identifier and highlighted the importance of the consumer’s interest in knowing the source of a product. Our prior coverage of the case can be found here and here.
By way of brief background, in 2018 the District Court of Arizona found that consumers were likely to be confused as to the source of the BAD SPANIELS toy and ruled in favor of Jack Daniel’s. The United States Court of Appeals for the Ninth Circuit reversed, ruling that Jack Daniel’s infringement claim was subject to the Rogers test because the toy is an “expressive work” and therefore protected under the First Amendment.
During oral arguments in March 2023, it appeared that the Supreme Court was poised to rule in favor of Jack Daniel’s; and in its unanimous decision the Justices did precisely that. In its decision, the Court held that the Ninth Circuit’s application of the Rogers test was inappropriate and that VIP’s products, while they may be intended to be humorous and parodic, use a number of marks as source-identifiers in the BAD SPANIELS toy and is thus subject to the standard likelihood of confusion test under Section 43(a) of the Lanham Act.
VIP alleged in its own pleadings that it has common law rights to the BAD SPANIELS mark and uses the BAD SPANIELS mark and trade dress to indicate the source of their goods. In addition to VIP’s statements regarding ownership of the marks, VIP’s use of the mark on product hang tags directly opposite their registered SILLY SQUEAKERS logo also indicates use as a source identifier.
The Supreme Court’s decision focused its analysis on use of a mark as a source identifier, as opposed to the Ninth Circuit’s focus on the mark as an expressive work. In Rogers v. Grimaldi, the Second Circuit established a threshold test for artistic works that incorporate third party trademarks. Simply put, “[w]hen a title ‘with at least some artistic relevance’ was not ‘explicitly misleading as to source or content,’ the claim could not go forward.” The Ninth Circuit applied Rogers to dismiss Jack Daniel’s infringement claim out of hand. The Supreme Court’s ruling has now made it clear that when use of a mark “is ‘at least in part’ for ‘source identification’—when the defendant may be ‘trading on the good will of the trademark owner to market its own goods’—Rogers has no proper role.”
The Court specifically took issue with the Ninth Circuit’s proposition that the BAD SPANIELS toy is automatically entitled to Rogers’ protection because it communicates a humorous message, noting that “[o]n that view, Rogers might take over much of the world.” Justice Kagan cited a number of cases where a mark functioned as a mark and also had parodic content, but all of those cases called for the defendant to “meet an infringement claim on the usual battleground of ‘likelihood of confusion.’” On remand, the Court did note that while the Rogers test does not justify VIP’s use of the BAD SPANIELS mark, its parodic nature is relevant to the standard likelihood of confusion analysis.
The Court also addressed the Ninth Circuit’s dismissal of Jack Daniel’s claim of dilution by tarnishment. Using the broad idea of parody and humorous commentary, the Ninth Circuit held that because VIP’s use of the BAD SPANIELS mark was parody it was excluded from dilution liability as a noncommercial use. In line with the rest of its opinion, the Court markedly disagreed stating that “parody (and criticism and commentary, humorous or otherwise) is exempt from liability only if not used to designate source.”
Justice Kagan noted that the opinion is meant to be narrow, holding “only that Rogers does not apply when the challenged use of a mark is as a mark” and “the noncommercial exclusion does not shield parody or other commentary when its use of a mark is similarly source-identifying.”
The message here is clear: while parody is often, and should be, associated with heightened First Amendment protections, it does not outweigh the importance of a mark as a source-identifier.
 875 F.2d 994, 999 (CA2 1989).
 Jack Daniel’s Properties, Inc., 599 U.S. at 11 (citing Rogers v. Grimaldi)
 Id. at 14.
 Id. at 15.
 See Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806, (1999); Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d. 410 (SDNY 2002); United We Stand Am., Inc. v. United We Stand, Am. New York, Inc., 128 F.3d 86 (1997).
 Jack Daniel’s Properties, Inc., 599 U.S. at 20.