Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140

Background

VIP Products sold a squeaky dog toy, “Bad Spaniels,” that mimicked Jack Daniel's bottle, altering marks (e.g., “Jack Daniel's” → “Bad Spaniels,” “Old No. 7” → “Old No. 2 On Your Tennessee Carpet”).
Jack Daniel's sued for trademark infringement and dilution by tarnishment under the Lanham Act; VIP sought a declaratory judgment that the toy was an expressive parody and not infringing or diluting.
VIP moved for summary judgment invoking the Rogers v. Grimaldi threshold test (protecting expressive works) for infringement and the Lanham Act’s “noncommercial use”/fair-use exclusions for dilution.
The District Court held VIP used the copied features as source identifiers (i.e., as trademarks), denied Rogers and fair-use protection, and found likely confusion and tarnishment; the Ninth Circuit reversed, applying Rogers and treating the parody as noncommercial for dilution.
The Supreme Court vacated and remanded: it held Rogers does not apply when a defendant uses a mark as a designation of source and held the noncommercial-use exclusion does not shield source-identifying parodies from dilution; it remanded to assess likelihood of confusion with parody considered as a factor.

Issues

Issue	Plaintiff's Argument (Jack Daniel's)	Defendant's Argument (VIP)	Held
Whether the Rogers threshold test applies when the defendant uses the plaintiff's mark to designate the defendant's own product source	Rogers should not apply because VIP used the Jack Daniel's-derived features as trademarks (source identifiers); therefore ordinary likelihood-of-confusion analysis governs	Rogers applies because Bad Spaniels is an expressive/parodic work; infringement claims should be dismissed unless Rogers' narrow exceptions are met	Rogers does not apply when the challenged use is a use "as a mark" (a designation of source). The case was remanded to decide likelihood of confusion, with parody allowed to inform that analysis
Whether the Lanham Act’s “noncommercial use” exclusion shields VIP’s parody from dilution liability by tarnishment	The noncommercial exclusion cannot be read to permit parody-based dilution immunity when the parody is used as a designation of source; the statute’s fair-use carve-out shows Congress meant to deny protection in that circumstance	The parody is noncommercial (and humorous) and thus falls within §1125(c)(3)(C), shielding VIP from dilution liability	The noncommercial-use exclusion does not protect parodies that are used as source identifiers. The Ninth Circuit’s reading that parodies are always exempt was reversed; remanded for further proceedings
Role of parody/expressive content in infringement analysis	Parodic/expressive content is relevant and should be considered within the likelihood-of-confusion analysis (may reduce confusion)	Expressive content triggers Rogers and forecloses ordinary likelihood-of-confusion scrutiny	Expressive/parodic content does not trigger Rogers if mark is used as a mark, but such content may be considered as a factor in the ordinary likelihood-of-confusion inquiry

Key Cases Cited

Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (origin of the threshold First Amendment test for expressive uses of trademarks)
Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002) (applied Rogers where mark use was non-source-identifying in a song lyric)
Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806 (2d Cir. 1999) (refused Rogers where defendant used mark as a trademark for his business)
Louis Vuitton Malletier v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007) (parody can influence the likelihood-of-confusion analysis)
Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003) (discusses dilution standard)
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (parody principles in fair use context)
Matal v. Tam, 582 U.S. 218 (2017) (trademark function and First Amendment interaction)
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995) (trademark function and protection)