Writing for a unanimous Court, Justice Kagan reversed and remanded the case, essentially holding that the District Court got it right the first time. The Court’s key advice: “When an alleged infringer uses a trademark as a designation of source for the infringer’s own goods, the Rogers test does not apply.” Put simply, the Court held that Rogers has no relevance when an alleged infringer is using another’s mark in connection with a commercial product (like a dog toy), as opposed to an artistic work (like a movie). The Court noted, however, that “VIP uses the [Jack Daniel’s] marks…in an effort to ‘parody’ or ‘make fun’ of Jack Daniel’s…[a]nd that kind of message matters in assessing confusion because consumers are not so likely to think that the maker of a mocked product is itself doing the mocking.” So, on remand, the District Court will need to look at the issue of confusion through the lens of parody. Notably, Jack Daniel’s was successful in proving confusion during the 2017 bench trial, with the District Court holding that the parody defense could not save VIP Products.
So what are the key takeaways from this case? The biggest is the narrowing of the First Amendment defense. Since 1989, the federal courts have been expanding the concept of trademark fair use under Rogers. The Court made clear that Rogers only applies to a very small class of cases – ones where the product accused of infringement is itself an artistic work. In Rogers, the product was a movie loosely based on the lives of Fred Astaire and Ginger Rogers. Here, the product is dog toy. The Court stated when an alleged infringer uses another’s mark “as a designation of source for the infringer’s own goods” then Rogers (and the First Amendment protections it provides) do not apply. What this means is that a First Amendment defense will likely not succeed in future cases where the product accused of trademark infringement is a commercial product, as opposed to an artistic one.
Another interesting aspect of this case is the Court’s commentary on the use of survey evidence in trademark cases. The Court remanded for Jack Daniel’s to show that consumers are likely to be confused into believing that the ‘Bad Spaniels’ dog toy was affiliated with or sponsored by them. This would typically be done through consumer survey evidence. But Jack Daniel’s already proved confusion when they prevailed in the District Court in 2017, a point the Supreme Court noted (“The District Court found, based largely on survey evidence, that consumers were likely to be confused about the source of the Bad Spaniels toy.”). So why not just reverse and direct a finding for Jack Daniel’s? Well, the Court clearly wanted the District Court to consider the concept of parody more carefully when assessing likelihood of confusion (“But a trademark’s expressive message—particularly a parodic one, as VIP asserts—may properly figure in assessing the likelihood of confusion.”). Justice Sotomayor’s concurrence also warns lower courts about placing too much emphasis on surveys, and notes that surveys often don’t take into account the impact of parody on the consumer. So the Court’s message to the District Court was ‘look at everything again, and don’t place too much emphasis on consumer surveys.’
It is also interesting that Justice Kagan wrote the opinion here, with Justice Sotomayor writing a strong concurrence. Not more than a month ago these two Justices were at odds with one another over the result in the Warhol case, which dealt with fair use in the copyright arena. Justice Kagan was pretty vocal in her support of artists and their right to use prior works in Warhol, whereas Justice Sotomayor was not. See Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 143 S.Ct. 1258 (2023), holding that Andy Warhol infringed photographer Lynn Goldsmith’s copyright in creating a painting of Prince. Here, Justice Kagan is going in the opposite direction – she is saying that a dog toy is not the same artistically as a motion picture, and therefore doesn’t deserve the same fair use protections, and she is probably right. That said, both decisions indicate a strong preference of the Court to protect intellectual property rights (both Lynn Goldsmith’s and Jack Daniel’s).
On remand, the Arizona District Court will need to determine what a consumer is more likely to assume – that the ‘Bad Spaniels’ dog toy is a parody, or that it is a licensed Jack Daniel’s product. While this might seem like a straightforward inquiry, opinions amongst dog owners, attorneys, and everyone else, are varied. The court may want to listen to a little Chris Stapleton, and enjoy some “Tennessee Whiskey,” while struggling to find the right outcome.