Chew on This: Parody of Famous Mark Not Protected by First Amendment or Excluded from Dilution Liability

By: Donna M.D. Thomas 

On June 8, 2023, the Supreme Court of the United States issued a unanimous decision in the case of Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 22-148, 599 U.S. ___ (2023), ruling that when an alleged infringer uses a mark as a trademark to designate the source of its own goods, the Rogers test providing First Amendment protection for titles of artistic works does not apply to shield the challenged use from liability for trademark infringement, nor do the noncommercial use and fair use exclusions under the Lanham Act apply to foreclose dilution liability.

Jack Daniel’s makes and sells whiskey using the bottle design and label shown below, which are trademarks of Jack Daniel’s and are covered by several trademark registrations, including “Jack Daniel’s,” “Old No. 7,” the arched Jack Daniel’s logo, the stylized label with filigree (twirling white lines) and the distinctive square bottle design. VIP Products is a dog toy company that makes a line of chewable rubber toys called “Silly Squeakers,” many of which are designed to look like and parody popular beverage brands. Jack Daniel’s found no humor when VIP Products added the “Bad Spaniels” toy to its line (shown below), which is about the same size and shape as a bottle of Jack Daniel’s whiskey and uses the words “Bad Spaniels” in place of “Jack Daniel’s” in a similar font and arch, uses a similar black label and filigreed border, replaces “Old No. 7 Tennessee Sour Mash Whiskey” with “The Old No. 2 On Your Tennessee Carpet” and substitutes “43% poo by vol.” and “100% smelly” for “40% alc. by vol. (80 proof).” VIP’s Bad Spaniels product is packaged for sale with a hangtag (shown below) bearing two logos, one for Silly Squeakers and one for Bad Spaniels, and includes a disclaimer that the product is not affiliated with Jack Daniel Distillery.

Jack Daniel’s claimed that the Bad Spaniels name and packaging (known as trade dress) both infringed and diluted its trademarks because the use of such marks were likely to confuse consumers as to the source or sponsorship of VIP’s product (by leading consumers to believe that Jack Daniel’s had created or was responsible for the Bad Spaniels product) and tarnished its famous marks by associating them with dog excrement.

In reviewing the decision of the Court of Appeals for the Ninth Circuit, which reversed the trial court’s finding for Jack Daniel’s on both its infringement and dilution claims, the Supreme Court considered whether the Rogers test, which protects First Amendment interests, applied as a threshold matter to the infringement claim, and whether the Lanham Act’s exclusions for noncommerical and fair use of a mark exempted VIP from liability for dilution.

In Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989), the Second Circuit declared that titles of artistic works, like the works themselves, have an expressive element that implicate First Amendment interests, and that when the title of such a work bears some artistic relevance to the work and does not expressly mislead as to the source or content of the work, the use of such title is protected by the First Amendment and does not constitute trademark infringement. The Rogers test has been applied, for example, to find that a band’s use of the title “Barbie Girl” for a song was not an infringement of Mattel’s Barbie mark because such title was artistically relevant to the song’s lyrics. 

The Ninth Circuit, having found the Bad Spaniels product to be an expressive work that communicates a parodic message about Jack Daniel’s, concluded that the Rogers test should be applied as a threshold test to Jack Daniel’s infringement claim, before any consideration of the likelihood of confusion analysis. On remand, VIP was granted summary judgment on such claim when Jack Daniel’s failed to satisfy either prong of the Rogers test by proving that the use of VIP’s marks had no artistic relevance to the product or that it explicitly misled as to the source or content of the product.

With respect to the dilution claim, the Ninth Circuit awarded judgment to VIP on the basis that the use of its marks is noncommercial because it parodies and comments humorously on Jack Daniel’s, and therefore falls under the express exclusion in 15 U.S.C. § 1125(c)(3)(C) of the Lanham Act which provides that any noncommercial use of a mark is not actionable as dilution.

The Supreme Court found that the Ninth Circuit misapplied the law as to both the infringement and dilution claims and vacated its judgment and remanded the case for further proceedings consistent with its opinion. Both findings turned on the fact that VIP used the Bad Spaniels marks in a trademark manner to identify the source of its product.

First, the Supreme Court held that when an alleged infringer uses a mark in a trademark manner as a designation of source for its own products, the Rogers test (or any threshold First Amendment filter) does not apply, so there is no threshold First Amendment test to satisfy before the infringement claim is considered under the Lanham Act’s likelihood-of-confusion inquiry. The Supreme Court explained that in Rogers v. Grimaldi and the decisions which followed it, courts have confined application of the Rogers test to cases “in which a trademark is used not to designate a work’s source, but solely to perform some other expressive function.” Jack Daniel’s, slip op. at 11. The Supreme Court further explained that in cases where trademarks are used as marks to designate source, courts routinely disregard the Rogers test and conduct a likelihood of confusion analysis, including in the Second Circuit where the Rogers test was formulated. 

As an example of a strikingly similar case, the Supreme Court pointed to Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F.Supp.2d 410 (S.D.N.Y. 2002), in which the defendant, who sold a line of pet perfumes using names which parody human perfume brands, asked the court to apply the Rogers test in defending an infringement claim against its use of the mark Timmy Holedigger. That court, relying on Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806 (2d Cir. 1999), refused to apply Rogers, explaining that Rogers applies to suits involving only nontrademark uses of a mark, meaning the mark is not being used to identify the source of a product, but rather to convey a different message. Even where an alleged infringer is making an expressive comment, including parodying a different product, if some part of its use is for source identification purposes, then its use of another’s mark may be trading on the goodwill of the trademark owner to promote its own goods, in which case the Rogers test does not apply and the case must be determined by a likelihood of confusion analysis. Jack Daniel’s slip op. at 13-14 (citing Tommy Hilfiger, 221 F.Supp.2d at 414-416). So even though VIP’s Bad Spaniels may communicate a humorous, parodic message with respect to Jack Daniel’s or its product, VIP also conceded that it used its Bad Spaniels mark and trade dress as a mark and source identifier for its dog toy, rendering the Rogers test inapplicable. As a result, the Supreme Court remanded the case to the trial court to determine whether the Bad Spaniels marks are likely to cause confusion with Jack Daniel’s marks, with the Court noting that Bad Spaniels’ expressive and parodic message may be properly accounted for in assessing likelihood of confusion. 

Second, the Supreme Court held that the statutory exclusions from actionable dilution under the Lanham Act for noncommercial use and fair use of a mark in connection with parodying, criticizing or commenting on a famous mark owner or its products, do not apply if the alleged diluter uses a mark as a designation of source for its own products. This is the case because the fair-use exclusion has its own express statutory exclusion under 15 U.S.C. § 1125(c)(3)(A)(ii), which states that the fair use exclusion only applies to the use of a famous mark by another “other than as a designation of source for the person’s own goods or services” (emphasis added). Accordingly, the Court declared that the statutory noncommercial use and fair use exclusions from dilution liability (including for parody, criticism, and commentary) do not apply when a mark is used to designate source. 

The Supreme Court noted that its opinion is narrow and does “not decide whether the Rogers test is ever appropriate, or how far the ‘noncommerical use’ exclusion goes.” Jack Daniel’s slip op. at 20. In their concurring opinion, Justices Sotomayor and Alito cautioned that surveys in trademark infringement cases involving parodies and other First Amendment concerns should be carefully considered as only one piece of the multifactor likelihood of confusion analysis because they could artificially or inaccurately reflect consumer confusion or actual consumer experiences in the marketplace. 

If you have questions about intellectual property or business matters, contact the author, Donna M.D. Thomas. Donna is a partner with the law firm Goodell DeVrieswhere she represents clients in commercial and intellectual property transactions and disputes. She handles everything from multi-million dollar sales, mergers and acquisitions for publicly-traded corporations to business agreements, business counseling, advertising clearance, and the clearance, registration, licensing, protection and defense of copyrights and trademarks for individuals and businesses. She can be reached at

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