Written by Julia Manini
In the United States, once a trademark is federally registered, the owner has the exclusive right to use the mark. This protection is thought to conflict with the First Amendment because it places restrictions on the use of trademarks in expressive works by non-owners.
The “Rogers test,” created by the Second Circuit in Rogers v. Grimaldi, has been used by courts throughout the United States for alleged Lanham Act violations that implicate a freedom of expression issue and requires considering: “1) whether use of another’s trademark in an expressive work has some ‘artistic relevance’ to the underlying work, and 2) whether the use ‘explicitly misleads as to the source or the content of the work.’”[1] For example, the test was adopted by the Ninth Circuit in Mattel, Inc. v. MCA Records, Inc., where the court held that a music group’s song titled “Barbie Girl” did not infringe on a toy manufacturers’ trademark because use of the mark did not mislead consumers as to the source of the work and was artistically relevant to the song itself, as it was about Barbie.[2] Although the Rogers test has been used for over thirty years, the Supreme Court’s recent ruling in Jack Daniel’s Properties, Inc. v. VIP Products LLC, indicates that its reign may be over.[3]
In Jack Daniel’s Properties, Inc. v. VIP Products LLC, a dog toy manufacturer was accused (in part) of trademark infringement for mimicking a whiskey brand’s trademarked bottle design.[4] The Supreme Court was considering an appeal by Jack Daniel’s from the Ninth Circuit’s decision, which found that the dog toy was an expressive work protected under the Rogers test.[5] After hearing arguments from both sides, the Supreme Court ruled in favor of Jack Daniel’s, vacating the Ninth Circuit’s decision and remanding it for further proceedings. However, in finding for Jack Daniel’s, the Supreme Court explicitly cabined the Rogers test and placed significant doubt on the scope and viability of it going forward.[6] The Supreme Court’s decision essentially held that the dog toy functioned as a mark in some capacity and therefore was not entitled to heightened first amendment protections, even if it was an expressive work.[7] The Court reasoned that when a trademark is being used as a mark by a non-owner, the standard likelihood-of-confusion analysis must be applied, regardless of whether a work is expressive with artistic relevance.[8]
Although the Supreme Court did not overrule the Rogers test outright, it is difficult to discern if the test will be applicable in even the most apparent artistic and expressive issues. At minimum, “the Rogers test appears unlikely to apply in the context of commercial and consumer products that leverage another party’s trademark in some way,” because in most circumstances it can successfully be argued that even if the work is expressive, the infringer would be “trading on the good will of the trademark owner.”[9] However, the test may still be applicable in cases concerning “traditional” expressive works, such as films, books, or television programs.[10] Ultimately, the applicability of the test remains in limbo and lower courts will likely have to grapple with this issue on their own, as the question of whether the Rogers test survives at all “remains for resolution another day” by the Supreme Court.[11]
[1] Thomas W. Brooke et al., Supreme Court Rules on Rogers Test Regarding Parodies of Others’ Trademarks: The First Amendment-Friendly Test Doesn’t Apply to Uses “as a Trademark,” Holland & Knight (June 12, 2023), https://www.hklaw.com/en/insights/publications/2023/06/supreme-court-rules-on-rogers-test-regarding-parodies#:~:text=Instead%20of%20likelihood%20of%20confusion,of%20the%20work.%22%20Id, https://perma.cc/XL7M-DA5J; Rogers v. Grimaldi, 875 F. 2d 994, 999 (2d Cir. 1989).
[2] Tamar Buchakjian, Mattel, Inc. v. MCA Records, Inc.: Let’s Party in Barbie’s World – Expanding the First Amendment Right to Musical Parody of Cultural Icons, 36 Lᴏʏ. L.A. L. Rᴇᴠ. 1321 (2003).
[3] Jack Daniels Properties, Inc. v. VIP Products LLC, No. 22-148 (U.S. June 8, 2023).
[4] Nina Totenberg, Supreme Court sides with Jack Daniel’s in trademark dispute with dog toy maker, National Public Radio (NPR) (June 8, 2023, 9:00PM ET), https://www.npr.org/2023/06/08/1181012952/supreme-court-jack-daniels-decision, https://perma.cc/Q2L5-4HE6.
[5] Anthony J. Dreyer et al., Supreme Court Sharply Limits Applicability of Rogers v. Grimaldi Test for Trademark Infringement, Skadden, Arps, Slate, Meagher & Flom LLP and Affiliates (June 8, 2023), https://www.skadden.com/insights/publications/2023/06/supreme-court-sharply-limits-applicability, https://perma.cc/5UQH-3NXN.
[6] Id.
[7] Id.
[8] Id.
[9] Id.
[10] Thomas W. Brooke et al., Supreme Court Rules on Rogers Test Regarding Parodies of Others’ Trademarks: The First Amendment-Friendly Test Doesn’t Apply to Uses “as a Trademark,” Holland & Knight (June 12, 2023), https://www.hklaw.com/en/insights/publications/2023/06/supreme-court-rules-on-rogers-test-regarding-parodies#:~:text=Instead%20of%20likelihood%20of%20confusion,of%20the%20work.%22%20Id, https://perma.cc/XL7M-DA5J.
[11] supra note 3.
