Trademark Infringement Is No Joking Matter: Supreme Court Reevaluates Parody Fair Use Exception and First Amendment’s Place in Trademark Infringement

In a unanimous 9-0 decision, the U.S. Supreme Court ruled that when a junior trademark user uses a parody of a famous trademark as an indicia of source for its own goods, the junior user cannot rely on the First Amendment to shield it from liability for trademark infringement for artistic or so-called “expressive works,” nor the parody exception to trademark dilution claims under the Lanham Act.

The Supreme Court’s June 8, 2023, decision in Jack Daniel’s Properties v. VIP Products vacated an earlier decision by the Ninth Circuit, which had ruled in favor of the junior trademark user that was selling a dog toy—“Bad Spaniels”— that parodied a Jack Daniel’s whiskey bottle.  In ruling that the Rogers test, previously used to protect First Amendment interests and “fair use” in the trademark context, is not applicable when an infringer uses such mark as a source identifier—i.e., as a trademark—for its own goods, the Court clarified a significant point of contention in trademark law.

A Recap of the Battle

In 2020, the Ninth Circuit deemed the dog toy, Bad Spaniels, an expressive work that is afforded First Amendment protection. This decision, which Jack Daniel’s had previously petitioned unsuccessfully, contradicted the district court’s original judgment of trademark infringement and dilution by VIP Products.

However, Jack Daniel’s persistently petitioned for a second time, posing two critical questions: (1) whether a humorous use of a trademark on a commercial product is subject to the Lanham Act’s “likelihood of confusion” analysis or if it receives heightened First Amendment protection; and (2) whether such use is “noncommercial,” barring a dilution by tarnishment claim under the Trademark Dilution Revision Act.

The Decision

The Supreme Court took a narrower approach than what both parties proposed. While the Court stopped short of discarding the Rogers test completely (as Jack Daniel’s advocated), it also declined junior user VIP Products’ invitation to significantly broaden the scope of the test. The Court held that Rogers does not apply when a trademark is used as an identifier of source for the infringer’s own goods. Yet, the Court did not entirely reject the parody defense, noting that the nature of the parody affects the likelihood of confusion analysis. After all, consumers are not immediately likely to think a mockery of a brand emanates from the brand itself. 

But the Court rejected the Ninth Circuit’s expansive interpretation of the noncommercial use exclusion and VIP Products’ argument that its parody use of the Jack Daniel’s mark was noncommercial because of its parodic nature. Rather, the Court concluded that noncommercial use where the imitator is essentially using another’s trademark as its own trademark does not automatically exempt a trademark from dilution liability.

The Implications

The Supreme Court’s ruling has already been praised, while there are concerns about the potential impact on businesses whose models rely on parody. Such companies may benefit from prompt assessment of their products following the ruling. Nevertheless, the Rogers test—although narrowed—survived, and the Court appears to intend to preserve Rogers as originally intended: to allow for parody, commentary, and criticism for artistic or expressive works.

First Amendment protections in the trademark context will likely continue to be a dynamic and contentious subject. Those who are enforcing their brands as well as those who are in (or thinking about being in) the business of humorous and parody-based goods should stay tuned for the remand and other updates in trademark law.

AALRR has a dedicated group of attorneys on its Intellectual Property Team with the experience and expertise to vigorously enforce your trademarks and defend you against claims of trademark infringement and other business disputes. Attorneys on the Firm’s Intellectual Property Team can also assist you with registration of your trademarks with the United States Patent and Trademark Office. If you are considering using a parody of a famous trademark, or if you have other trademark-related issues, contact the authors or another member of the AALRR Intellectual Property Team.

This AALRR post is intended for informational purposes only and should not be relied upon in reaching a conclusion in a particular area of law. Applicability of the legal principles discussed may differ substantially in individual situations. Receipt of this or any other AALRR publication does not create an attorney-client relationship. AALRR is not responsible for inadvertent errors that may occur in the publishing process. 

© 2023 Atkinson, Andelson, Loya, Ruud & Romo

Categories: Business, Trademark


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