The Supreme Court Did Not Find Parody In “Bad Spaniels,” A Dog Toy Imitation Of Jack Daniel’s Bottle

On June 8, 2023, in a unanimous ruling, the U.S. Supreme Court vacated the Ninth Circuit’s ruling in the much anticipated trademark case, Jack Daniel’s Properties, Inc. v. VIP Products LLC. VIP makes a “Bad Spaniels” dog toy “designed to look like a bottle of Jack Daniel’s whiskey.” Jack Daniel’s accused VIP of trademark infringement and trademark dilution.

The Court’s holding is two-fold. First, on the trademark infringement claim, the Court held that the Rogers test—often used to cases in which a trademark is used in, and bears some artistic relationship to, an “expressive work”—“does not apply when the challenged use of a mark is as a mark,” (i.e., when “the accused infringer has used a trademark to designate the source of its own goods”). Second, on the trademark dilution claim, the Court held that “the noncommercial exclusion [of the Lanham Act] does not shield parody or other commentary when its use of a mark is similarly source-identifying.”

Jack Daniel’s claimed that Bad Spaniels infringed and diluted trademarks in the Jack Daniel’s bottle, and words and graphics on the label. Jack Daniel’s argued that Bad Spaniels infringed “by leading consumers to think that Jack Daniel’s had created, or was otherwise responsible for, the dog toy,” and Bad Spaniels diluted the trademarks by associating the whiskey with “dog excrement.”

VIP argued that the infringement claim failed under the Rogers test because Bad Spaniels is an “expressive work” and Jack Daniel’s could not show either “(1) that the challenged use of a mark ‘ha[d] no artistic relevance to the underlying work’ or (2) that it ‘explicitly mis[led] as to the source or the content of the work.’” VIP also argued that the dilution claim failed because “Bad Spaniels was a parody of Jack Daniel’s and therefore made ‘fair use’ of its famous marks” consistent with the Lanham Act’s “fair use” exclusion.

The District Court ruled in favor of Jack Daniel’s, but the Ninth Circuit reversed in favor of VIP. The Ninth Circuit found the infringement claim subject to the Rogers test “because Bad Spaniels is an ‘expressive work’” as it “communicates a humorous message.” On the dilution claim, the Ninth Circuit held that the noncommercial use exclusion “shielded VIP from liability” because the use of a mark here was for parody and humorous commentary.

The Supreme Court’s opinion, written by Justice Kagan, rejected both the Ninth Circuit’s expansive application of the Rogers test to “expressive work” cases where trademarks act as trademarks and the expansive view of the noncommercial use exclusion. For the infringement claim, the Court found that under the Ninth Circuit’s application of Rogers, “few cases would even get to the likelihood-of-confusion inquiry,” as trademarks “are often expressive” in some way. The Court noted that where a trademark is used as a trademark, the likelihood-of-confusion inquiry will sufficiently “account for the interest in free expression.” Concerning dilution, the Court found that the Ninth Circuit’s view of the “noncommercial use” exclusion effectively nullified “Congress’s express limit on the fair-use exclusion for parody,” further stating, “the fair-use exclusion has its own exclusion: It does not apply when the use is ‘as a designation of source for the person’s own goods or services.’”

The Court vacated the Ninth Circuit’s ruling and remanded the trademark infringement claim to the courts below to decide “whether the Bad Spaniels marks are likely to cause confusion.”

It will be interesting to see how the lower courts rule on remand. This is especially true in light of the Court’s comment that “a trademark’s expressive message—particularly a parodic one, as VIP asserts—may properly figure in assessing the likelihood of confusion,” which seems to suggest that a lower court may find Bad Spaniels’ “expressive message” to be enough of a parody that it does not create confusion as to the source of the good, and thus, VIP could still prevail under a standard trademark likelihood-of-confusion analysis.

This opinion likely will have the effect of limiting the use of the Rogers inquiry as a filter prior to the likelihood-of-confusion analysis to cases where the allegedly infringing product uses the plaintiff’s mark only in an expressive context, and not as a source identifier. Justice Kagan noted in a footnote that although the Rogers test may no longer be applied as a “shortcut to dismissal” in cases involving the use of trademarks as trademarks, not every infringement case involving a source-identifying use will require “full-scale litigation.” Justice Kagan noted that some cases “will not present any plausible likelihood of confusion,” leaving the door open for dismissals under Fed. R. Civ. P. 12(b)(6) as well.

As a practical matter, this case suggests that business owners considering creating products that parody well-known trademarks should take caution to separate their expressive content from their branding. For example, VIP’s packaging included two marks: one for “SILLY SQUEAKRS,” the overall product line, and one for “BAD SPANIELS,” the specific toy. Had the product been otherwise the same, but the branding focused prominently on the mark SILLY SQUEAKERS, they may have been able to avail themselves of Rogers test to secure an early dismissal, even after this decision.

The Court repeatedly declined to take a position on the Rogers test, and Justice Gorsuch even wrote separately to emphasize that lower courts should handle Rogers with care. Thus, it will also be interesting to see how the courts continue to apply Rogers and with what frequency applicable cases arise.