On June 8, 2023, the Supreme Court issued its unanimous opinion in Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. ___ (2023), vacating the Ninth Circuit’s judgment in the case. In the Court’s view, the Ninth Circuit misunderstood the Second Circuit’s decision in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (Newman, J.) (holding that some Lanham Act claims implicating expressive works must be evaluated under a threshold test sensitive to the First Amendment interests of the alleged wrongdoer). While the Supreme Court’s ruling is significant for several reasons, its principal importance lies in what the Court says—and declines to say—about the meaning and scope of Rogers, the starting point here.
I – Rogers
A – District Court
In 1986, Ginger Rogers, the internationally known actress and film star, brought an action based in part on Section 43(a) of the Lanham Act (“False designations of origin, false descriptions, and dilution forbidden”) against a number of individuals and firms involved in the creation, production, and distribution of a film entitled, “Ginger and Fred.” Rogers v. Grimaldi, 695 F. Supp. 112 (S.D.N.Y. 1988). The film, conceived, co-written, and directed by Federico Fellini, the Academy Award-winning filmmaker, was a fictional account of the reunion of two retired dancers who, decades earlier, “made a living in Italian cabarets imitating Fred Astaire and Ginger Rogers, thus earning the nickname ‘Ginger and Fred.’” Id. at 114.
“Ginger and Fred” was promoted as satire; advertising posters referred to it as “the movie that looks at television through the eyes of Fellini.” Id. The district court accepted this view of the film’s artistic character:
The Film satirizes the world of television by presenting the central characters’ reunion against the background of an Italian television special for which they are called upon to reprise the routine that they have not performed in 30 years.
Id. At the same time, the district court found nothing in “Ginger and Fred” that placed Fred Astaire or Ginger Rogers in a poor light. On the contrary, the court agreed with the film’s reviewers who saw it as a “tribute,” an “act of homage,” and an “entirely respectful” treatment of the work of Astaire and Rogers. Id. n.2.
In the end, the district court rejected all three of Rogers’ claims as a matter of law. As for the Lanham Act claim, the Court held that “Ginger and Fred” was predominantly a work of artistic expression—not of commercial speech—which could not be subjected to the Act’s constraints:
[B]efore expression through film can be curtailed by the Lanham Act, the party seeking relief bears the heavy burden of establishing that the challenged speech is intended primarily to serve a commercial function.
In the instant case, Defendants contend that the use of Rogers’ first name in the title and screenplay of the Film constitutes an exercise of artistic expression rather than commercial speech. On the basis of viewing the Film and the undisputed facts in the record, it is so found.
Id. at 120. Thus, the district court imposed a threshold test for Lanham Act liability in speech cases, one barring enforcement of the Act except where the challenged speech was primarily intended to serve a commercial function.
B – The Court of Appeals
The Second Circuit affirmed the district court but rejected its test for determining whether a film’s title can be subjected to Lanham Act liability:
In effect, the District Court’s ruling would create a nearly absolute privilege for movie titles, insulating them from Lanham Act claims as long as the film is an artistic work, and the title is relevant to the film’s content. We think that approach unduly narrows the scope of the Act.
Id. at 997. The court’s concern was based in large part on its recognition that some expressive work participates in the commercial marketplace where the risk of consumer deception is real:
Movies, plays, books, and songs are all indisputably works of artistic expression and deserve protection. Nonetheless, they are also sold in the commercial marketplace like other more utilitarian products, making the danger of consumer deception a legitimate concern that warrants some government regulation.
Id. (citations omitted).
So, how are these competing interests to be reconciled? Rogers urged the court to adopt the view that “First Amendment concerns are implicated only where a title is so intimately related to the subject matter of a work that the author has no alternative means of expressing what the work is about.” Id. at 998. The court of appeals, however, rejected this test as one providing “insufficient leeway for literary expression.” Id. at 999. Instead, it chose a rule reflecting a level of deference to artistic works approximating the district court’s test but giving way to regulation “where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” Id. As for the application of the rule in the context of a film title alleged to offend the Lanham Act, the Second Circuit’s accommodation was this:
In the context of allegedly misleading titles using a celebrity’s name, that balance will normally not support application of the Act unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.
Id.
II – Jack Daniel’s
As the Supreme Court put it, “VIP is a dog toy company, making and selling a line of chewable rubber toys that it calls ‘Silly Squeakers.’” 599 U.S. at ___ (2023) (slip op., at 6). For the most part, the toys are designed to resemble and parody well known beverage brands. VIP’s “Dos Perros” toy does so with the beer brand, Dos Equis; its “Smella Arpaw” toy evokes the Stella Artois line of beers; and its “Doggie Walker” toy parodies the Johnny Walker brand of scotch whiskey. In each of these instances, VIP held trademark registrations on its toys.
In 2014, VIP added “Bad Spaniels” to its line, a toy designed to resemble and parody the Jack Daniel’s bottle, other aspects of its trade dress, as well as its related trademarks. Id. While VIP had not applied to register the Bad Spaniels mark, it claimed trademark rights in the mark and its trade dress. Id. Not surprisingly, Jack Daniel’s did not welcome the use of its brand in parody; on the contrary, it demanded that VIP stop selling the Bad Spaniels toy.
A – The District Court
But VIP had other plans. It brought a declaratory judgment action against Jack Daniel’s seeking a determination that Bad Spaniels neither infringed nor diluted Jack Daniel’s marks. For its part, Jack Daniel’s rejected VIP’s claims and counterclaimed for infringement and dilution. Later, VIP moved for summary judgment contending that, under the expressive-conduct rule first formulated in Rogers, VIP could not be liable for trademark infringement or dilution because it had engaged in parody, a protected form of expressive behavior. VIP Prods., LLC v. Jack Daniel’s Props., Inc., No. CV-14-2057-PHX-SMM, at *9 (D. Ariz. Sept. 27, 2016).
The district court rejected VIP’s reliance on Rogers. Id. at *10-11. In the court’s view, this was not expressive conduct of a kind sufficient to trigger the Rogers rule:
The Court finds that VIP’s dog toy is not entitled to protection under the First Amendment because it is not an expressive work. See Brown v. Elec. Arts, Inc., 724 F.3d 1235 (9th Cir. 2013) (stating that the Rogers test is reserved for expressive works). In Rogers, the court dealt with the intersection of trademark law and the title of a motion picture. 875 F.2d at 997. The Rogers court went on to find that movies, plays, books, and songs are works of “artistic expression” and thus subject to the balancing between trademark law and the protections of the First Amendment. Id.; see also E.S.S. Entm’t 2000 Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. 2008) (stating that the Rogers balancing test only applies to artistic works).
Id. at 9-10. But there was more to this for the district court; its decision did not turn simply on a characterization of VIP’s product as non-expressive:
Here, as was similarly the case in Tommy Hilfiger [Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410 (S.D.N.Y. 2002)], VIP is using an adaptation of the Jack Daniel’s trademark and trade dress for the dual purpose of making an alleged expressive comment as well as the commercial selling of a non-competing product. See Tommy Hilfiger, 221 F. Supp. 2d at 415. The Court agrees with the analysis in Tommy Hilfiger that because the adaptation of the Jack Daniel’s trademark and trade dress mark are being used, at least in part, to promote a somewhat non-expressive, commercial product, the First Amendment does not extend to such use. See id. at 415-16.
Id. at 9-10.
B – The Court of Appeals
The Ninth Circuit reversed the district court based on its own understanding of Rogers and its progeny:
In determining whether a work is expressive, we analyze whether the work is communicating ideas or expressing points of view. A work need not be the expressive equal of Anna Karenina or Citizen Kane to satisfy this requirement and is not rendered non-expressive simply because it is sold commercially.
VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1174-1175 (9th Cir. 2020) (citations, punctuation, and quotation marks omitted). In the Ninth Circuit’s view, VIP’s dog toy was expressive enough; it conveyed a simple but humorous message by “using word play to alter the serious phrase that appears on a Jack Daniel’s bottle—’Old No. 7 brand’—with a silly message ‘The Old No. 2.’” Id. at 1175. The court continued:
The effect is ‘a simple’ message conveyed by ‘juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner.’
Id. (quoting L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 34 (1st Cir. 1987). In other words, neither simplicity, nor humor, nor outright silliness in an admittedly commercial message is enough to disqualify the trademark holder from the benefits of the Rogers rule.
C – The Supreme Court
Justice Kagan, writing for the Supreme Court, vacated the Ninth Circuit’s judgment as a misunderstanding of Rogers. In the Court’s view, Rogers did not support the Ninth Circuit’s conclusion that VIP’s Bad Spaniels toy was an expressive work of the kind protected from claims of infringement by that case. Moreover, VIP, unlike the filmmakers in Rogers, clearly used the Bad Spaniels mark “in a way that the Lanham Act most cares about: as a designation of source for the infringer’s own goods.” 599 U.S. ___ (2023), slip op., at 10. Thus, rather than involving an expressive work comfortably within the scope of First Amendment protection with no indication of an accompanying trademark use, VIP’s dog-toy parody was of dubious First Amendment lineage and made clear use of the Jack Daniel’s trademarks and trade dress to enhance dog-toy sales.
III – Comment
How then should we understand Rogers after VIP? Justice Kagan might answer that we should have no different understanding because the Second Circuit’s opinion never suggested that every expressive trademark would trigger that court’s threshold test. Instead, she might continue, we should understand that the Rogers test was designed to deal with a subset of Lanham Act claims in which the allegedly offending use has an expressive component, but not a trademark purpose. But where, as in VIP, an arguably expressive mark is combined with a trademark purpose, the legality of the mark should be evaluated under standard likelihood-of-confusion principles, unaffected by a threshold test. The Court acknowledges that in those cases where confusion is determined to be likely some amount of expression will be compromised for the sake of the Lanham Act’s interests in avoiding consumer confusion and enhancing clarity in product identification. In the Court’s view, however, the First Amendment allows for such compromise.
In the end, Jack Daniel’s is clarification of Rogers that feels more like limitation and the beginning of reexamination. The opinion of the Court is explicit enough to support this view:
The point is that whatever you make of Rogers—and again, we take no position on that issue—it has always been a cabined doctrine. If we put this case to the side, the Rogers test has applied only to cases involving ‘non-trademark uses’—or otherwise said, cases in which ‘the defendant has used the mark’ at issue in a non-source-identifying way.
599 U.S. at ___ (2023) (slip op., at 13.) (citations omitted). And, if that was not enough, the concurring opinion of Justice Gorsuch (joined by Justices Thomas and Barrett) removes any doubt:
Today, the Court rightly concludes that, even taken on its own terms, Rogers does not apply to cases like the one before us. But in doing so, we necessarily leave much about Rogers unaddressed. For example, it is not entirely clear where the Rogers test comes from—is it commanded by the First Amendment, or is it merely gloss on the Lanham Act, perhaps inspired by constitutional-avoidance doctrine? For another thing, it is not obvious that Rogers is correct in all its particulars—certainly, the Solicitor General raises serious questions about the decision. All this remains for resolution another day, and lower courts should be attuned to that fact.
599 U.S. ___ (2023) (Gorsuch, J., concurring) (slip op., at 1) (internal citations omitted).
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Anthony F. Muri, July 24, 2023.