In a unanimous decision, the U.S. Supreme Court in Jack Daniel’s Properties v. VIP Products, No. 22-148 (June 8, 2023), ruled that a lower court erred when it said a poop-themed chew toy that parodies the famed whiskey maker’s bottle was covered by the First Amendment’s free speech protections to avoid a claim of trademark infringement. Under the Lanham Act, a third-party is prohibited from using a trademark in a way likely to cause confusion as to the origin, sponsorship, or approval of goods or services. In applying the Rogers test, which allows artists to use another’s trademark when doing so has artistic relevance to their work and would not explicitly mislead consumers as to the source of the work, the Ninth Circuit had ruled that Jack Daniel’s could not enforce its trademarks against VIP’s “Bad Spaniels” chew toy. The Ninth Circuit opined that the toy was an expressive work entitled to free-speech protection. The Supreme Court disagreed and held that the Ninth Circuit erred in applying the Rogers test. The Court explained that “it is not appropriate when the accused infringer has used a trademark to designate the source of its own goods - in other words, has used a trademark as a trademark. That kind of use falls within the heartland of trademark law, and does not receive special First Amendment protection.” Justice Kagan, writing for the Court, added that “few cases would even get to the likelihood-of-confusion inquiry if all expressive content triggered the Rogers filter.”
The case will return to the lower courts, where the case will center on whether consumers are likely to be confused as to the source of the Bad Spaniels toys.