Case Information
*1 P R E L I M I N A R Y P R I N T Volume 599 U. S. Part 1 Pages 140–165 OFFICIAL REPORTS OF THE SUPREME COURT June 8, 2023 REBECCA A. WOMELDORF reporter of decisions NOTICE: This preliminary print is subject to formal revision before the bound volume is published. Users are requested to notify the Reporter of Decisions, Supreme Court of the United States, Washington, D.C. 20543, pio@supremecourt.gov, of any typographical or other formal errors. OCTOBER TERM, 2022 Syllabus JACK DANIEL’S PROPERTIES, INC. v . VIP PRODUCTS LLC certiorari to the united states court of appeals for
the ninth circuit No. 22–148. Argued March 22, 2023—Decided June 8, 2023
The Lanham Act, the core federal trademark statute, defnes a trademark
by its primary function: identifying a product's source and distinguish- ing that source from others. In serving that function, trademarks help consumers select the products they want to purchase (or avoid) and help producers reap the fnancial rewards associated with a product's good reputation. To help protect trademarks, the Lanham Act creates fed- eral causes of action for trademark infringement and trademark dilu- tion. In a typical infringement case, the question is whether the de- fendant's use of a mark is “likely to cause confusion, or to cause mistake, or to deceive.” 15 U. S. C. §§ 1114(1)(A), 1125(a)(1)(A). In a typical di- lution case, the question is whether the defendant “harm[ed] the reputa- tion” of a famous trademark. §§ 1125(c)(2)(A), (C).
Respondent VIP Products makes a squeaky, chewable dog toy de- signed to look like a bottle of Jack Daniel's whiskey. But not entirely. On the toy, for example, the words “Jack Daniel's” become “Bad Span- iels.” And “Old No. 7 Brand Tennessee Sour Mash Whiskey” turns into “The Old No. 2 On Your Tennessee Carpet.” These jokes did not im- press petitioner Jack Daniel's Properties, which owns trademarks in the distinctive Jack Daniel's bottle and in many of the words and graphics on its label.
Soon after the Bad Spaniels toy hit the market, Jack Daniel's de- manded that VIP stop selling it. VIP fled suit, seeking a declaratory judgment that Bad Spaniels neither infringed nor diluted Jack Daniel's trademarks. Jack Daniel's counterclaimed for infringement and dilu- tion. At summary judgment, VIP argued that Jack Daniel's infringe- ment claim failed under the so-called Rogers test—a threshold test developed by the Second Circuit and designed to protect First Amendment interests in the trademark context. See Rogers Gri- maldi , 875 F. 2d 994. When “expressive works” are involved, VIP con- tended, that test requires dismissal of an infringement claim at the out- set unless the complainant can show either (1) that the challenged use of a mark “has no artistic relevance to the underlying work” or (2) that it “explicitly misleads as to the source or the content of the work.” Id., at 999. Because Jack Daniel's could not make that showing, VIP Syllabus claimed, the Lanham Act's statutory “likelihood of confusion” standard became irrelevant. And as for the dilution claim, VIP urged that Jack Daniel's could not succeed because Bad Spaniels was a parody of Jack Daniel's and therefore made “fair use” of its famous marks. § 1125(c)(3)(A)(ii).
The District Court rejected both of VIP's contentions for a common reason: because VIP had used the cribbed Jack Daniel's features as trademarks— i. e., to identify the source of its own products. As the District Court saw it, when another's trademark is used for “source identifcation,” Rogers does not apply, and instead the infringement suit turns on likelihood of confusion. The court likewise rejected VIP's in- vocation of the fair-use exclusion, holding that parodies fall within that exclusion only when they do not use a famous mark to identify the source of the alleged diluter's product. The case proceeded to a bench trial, where the District Court found that consumers were likely to be confused about the source of the Bad Spaniels toy and that the toy's negative associations with dog excrement ( e. g., “The Old No. 2”) would harm Jack Daniel's reputation. The Ninth Circuit reversed. Finding the infringement claim subject to the threshold Rogers test, the Court of Appeals remanded the case to the District Court to decide whether Jack Daniel's could satisfy either prong of that test. And the Court of Appeals awarded judgment on the dilution claim to VIP, holding that because Bad Spaniels parodies Jack Daniel's, it falls under the “noncom- mercial use” exclusion. § 1125(c)(3)(C). On remand, the District Court found that Jack Daniel's could not satisfy either prong of Rogers , and so granted summary judgment to VIP on infringement. The Court of Appeals summarily affrmed.
Held :
1. When an alleged infringer uses a trademark as a designation of source for the infringer's own goods, the Rogers test does not apply. Pp. 152–161.
(a) The Second Circuit created the Rogers test for titles of “artistic works” based on its view that such titles have an “expressive element” implicating “First Amendment values” and carry only a “slight risk” of confusing consumers about the “source or content” of the underlying work. 875 F. 2d, at 998–1000. Over the decades, lower courts adopting Rogers have confned it to similar cases, in which a trademark is used not to designate a work's source, but solely to perform some other ex- pressive function. See, e. g., Mattel, Inc. MCA Records, Inc. , 296 F. 3d 894, 901 (use of the Barbie name in band's song “Barbie Girl” was “not [as] a source identifer”). The same courts, though, routinely conduct likelihood-of-confusion analysis in cases where trademarks are v. Syllabus used as trademarks— i. e. , to designate source. See, e. g., Tommy Hil- fger Licensing, Inc. Nature Labs, LLC , 221 F. Supp. 2d 410, 414–415 (parodic pet perfumes did not trigger Rogers because defendant's use of Tommy Hilfger's mark was “at least in part” for “source identifcation”). Thus, whatever Rogers ' merit—an issue on which this Court takes no position—it has always been a cabined doctrine: It has not insu- lated from ordinary trademark scrutiny the use of trademarks as trademarks.
That conclusion fts trademark law, and refects its primary mission. Consumer confusion about source—trademark law's cardinal sin—is most likely to arise when someone uses another's trademark as a trade- mark. In such cases, Rogers has no proper application. Nor does that result change because the use of a mark has other expressive content. Under the Ninth Circuit's approach, Bad Spaniels was automatically entitled to Rogers ' protection because it “communicate[d] a humorous message.” 953 F. 3d 1170, 1175. On that view, few trademark cases would ever get to the likelihood-of-confusion analysis. And the Ninth Circuit was mistaken to believe that the First Amendment demanded such a result. When a mark is used as a source identifer, the First Amendment does not demand a threshold inquiry. Pp. 153–159.
(b) In this case, VIP conceded that it used the Bad Spaniels trade- mark and trade dress as source identifers. And VIP has said and done more in the same direction with respect to Bad Spaniels and other simi- lar products. The only question remaining is whether the Bad Spaniels trademarks are likely to cause confusion. Although VIP's effort to par- ody Jack Daniel's does not justify use of the Rogers test, it may make a difference in the standard trademark analysis. This Court remands that issue to the courts below. Pp. 159–161.
2. The Lanham Act's exclusion from dilution liability for “[a]ny non- commerical use of a mark,” § 1125(c)(3)(C), does not shield parody, criti- cism, or commentary when an alleged diluter uses a mark as a designa- tion of source for its own goods. The Ninth Circuit's holding to the contrary puts the noncommercial exclusion in confict with the statute's fair-use exclusion. The latter exclusion specifcally covers uses “paro- dying, criticizing, or commenting upon” a famous mark owner, § 1125(c)(3)(A)(ii), but does not apply when the use is “as a designation of source for the person's own goods or services,” § 1125(c)(3)(A). Given that carve-out, parody is exempt from liability only if not used to desig- nate source. The Ninth Circuit's expansive view of the noncommercial use exclusion—that parody is always exempt, regardless whether it des- ignates source—effectively nullifes Congress's express limit on the fair- use exclusion for parody. Pp. 161–162.
Syllabus 953 F. 3d 1170, vacated and remanded.
Kagan , J., delivered the opinion for a unanimous Court. Sotomayor , J., fled a concurring opinion, in which Alito , J., joined, post , p. 163. Gor- such , J., fled a concurring opinion, in which Thomas and Barrett , JJ., joined, post , p. 165
Lisa S. Blatt argued the cause for petitioner. With her on the briefs were Amy Mason Saharia, Matthew B. Nichol- son, Alexander Gazikas, and Isaac S. Crum.
Matthew Guarnieri argued the cause for the United States as amicus curiae urging reversal. With him on the brief were Solicitor General Prelogar, Principal Deputy Assistant Attorney General Boynton, Deputy Solicitor Gen- eral Stewart, Daniel Tenny, Thomas W. Krause, Christina J. Hieber, Thomas L. Casagrande, Mary Beth Walker, and Benjamin T. Hickman.
Bennett Evan Cooper argued the cause for respondent. With him on the brief were David G. Bray, Fredric D. Bel- lamy, and Vail C. Cloar. * *Briefs of amici curiae urging reversal were fled for the American
Apparel & Footwear Association et al. by John P. O'Herron and Zachary D. Cohen ; for the American Craft Spirits Association et al. by Steffen N. Johnson, Michael W. McConnell, and Conor D. Tucker ; for the American Intellectual Property Law Association by William G. Barber, Giulio E. Yaquinto, Lisa M. Tittemore, and Katherine W. Soule ; for Campari America LLC by Seth P. Waxman, Thomas G. Saunders, Mark G. Matu- schak, and Hannah E. Gelbort ; for the Campbell Soup Co. by H. Christo- pher Bartolomucci, Kathryn E. Tarbert, and Adam G. Ciongoli ; for the Chamber of Commerce of the United States of America et al. by Gregory G. Garre, Blake E. Stafford, Erica Klenicki, and Michael A. Tilghman II ; for Constellation Brands, Inc., by Edward T. Colbert and William M. Merone ; for the International Trademark Association by Vijay K. Toke ; and for NIKE, Inc., by Stanley J. Panikowski .
Briefs of amici curiae urging affrmance were fled for First Amend- ment Professors by Rebecca Tushnet, pro se ; for the Foundation for Indi- vidual Rights and Expression by Abigail Smith and JT Morris ; for MSCHF Product Studio, Inc., by William D. Patterson and John F. Bel- caster ; for the Motion Picture Association, Inc., by Susan J. Kohlmann Justice Kagan delivered the opinion of the Court. This case is about dog toys and whiskey, two items seldom appearing in the same sentence. Respondent VIP Products makes a squeaky, chewable dog toy designed to look like a bottle of Jack Daniel's whiskey. Though not entirely. On the toy, for example, the words “Jack Daniel's” become “Bad Spaniels.” And the descriptive phrase “Old No. 7 Brand Tennessee Sour Mash Whiskey” turns into “The Old No. 2 On Your Tennessee Carpet.” The jokes did not impress petitioner Jack Daniel's Properties. It owns trademarks in the distinctive Jack Daniel's bottle and in many of the words and graphics on the label. And it believed Bad Spaniels had both infringed and diluted those trademarks. Bad Spaniels had infringed the marks, the argument ran, by leading con- sumers to think that Jack Daniel's had created, or was other- wise responsible for, the dog toy. And Bad Spaniels had di- luted the marks, the argument went on, by associating the famed whiskey with, well, dog excrement. The Court of Appeals, in the decision we review, saw things differently. Though the federal trademark statute
makes infringement turn on the likelihood of consumer con- fusion, the Court of Appeals never got to that issue. On the court's view, the First Amendment compels a stringent threshold test when an infringement suit challenges a so- called expressive work—here (so said the court), the Bad and Adam G. Unikowsky ; for Dan McCall et al. by Paul Alan Levy and Scott L. Nelson ; and for 30 Trademark Law Professors by Phillip R. Malone.
Briefs of amici curiae were fled for the Authors Alliance et al. by Christopher T. Bavitz ; for the Electronic Frontier Foundation by Corynne McSherry and David Greene ; for the Intellectual Property Owners Asso- ciation by Eric R. Moran and Paul H. Berghoff ; for Intellectual Property Professors et al. by Megan K. Bannigan, David H. Bernstein, and Jared I. Kagan ; for Levi Strauss & Co. et al. by Gregory S. Gilchrist ; for the New York Intellectual Property Law Association by Robert J. Rando, Wil- liam Thomashower, and Irena Royzman ; for Scholars et al. by Adam W. Hofmann ; and for Andrew C. Michaels by Mr. Michaels, pro se . Spaniels toy. And that test knocked out Jack Daniel's claim, whatever the likelihood of confusion. Likewise, Jack's dilu- tion claim failed—though on that issue the problem was stat- utory. The trademark law provides that the “noncommer- cial” use of a mark cannot count as dilution. 15 U. S. C. § 1125(c)(3)(C). The Bad Spaniels marks, the court held, fell within that exemption because the toy communicated a mes- sage—a kind of parody—about Jack Daniel's.
Today, we reject both conclusions. The infringement issue is the more substantial. In addressing it, we do not decide whether the threshold inquiry applied in the Court of Appeals is ever warranted. We hold only that it is not appropriate when the accused infringer has used a trade- mark 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. The dilution issue is more simply addressed. The use of a mark does not count as noncommercial just because it parodies, or other- wise comments on, another's products.
I A Start at square 1, with what a trademark is and does.
The Lanham Act, the core federal trademark statute, defnes a trademark as follows: “[A]ny word, name, symbol, or de- vice, or any combination thereof ” that a person uses “to iden- tify and distinguish his or her goods . . . from those manufac- tured or sold by others and to indicate the source of the goods.” § 1127. The frst part of that defnition, identifying the kind of things covered, is broad: It encompasses words (think “Google”), graphic designs (Nike's swoosh), and so- called trade dress, the overall appearance of a product and its packaging (a Hershey's Kiss, in its silver wrapper). See Wal-Mart Stores, Inc. Samara Brothers, Inc. , 529 U. S. 205, 209–210 (2000). The second part of the defnition de- scribes every trademark's “primary” function: “to identify the origin or ownership of the article to which it is affxed.” Hanover Star Milling Co. v. Metcalf , 240 U. S. 403, 412 (1916). Trademarks can of course do other things: catch a consumer's eye, appeal to his fancies, and convey every man- ner of message. But whatever else it may do, a trademark is not a trademark unless it identifes a product's source (this is a Nike) and distinguishes that source from others (not any other sneaker brand). See generally 1 J. McCarthy, Trade- marks and Unfair Competition § 3:1 (5th ed. 2023). In other words, a mark tells the public who is responsible for a product.
In serving that function, trademarks beneft consumers and producers alike. A source-identifying mark enables customers to select “the goods and services that they wish to purchase, as well as those they want to avoid.” Matal v. Tam , 582 U. S. 218, 224 (2017). The mark “quickly and easily assures a potential customer that this item—the item with this mark—is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past.” Qualitex Co. Jacobson Products Co. , 514 U. S. 159, 164 (1995). And because that is so, the producer of a quality product may derive signifcant value from its marks. They ensure that the producer itself—and not some “imitating competitor”—will reap the fnancial rewards associated with the product's good reputation. Ibid.
To help protect marks, the Lanham Act sets up a voluntary registration system. Any mark owner may apply to the Patent and Trademark Offce to get its mark placed on a federal register. Consistent with trademark law's basic pur- pose, the lead criterion for registration is that the mark “in fact serve as a `trademark' to identify and distinguish goods.” 3 McCarthy § 19:10 (listing the principal register's eligibility standards). If it does, and the statute's other cri- teria also are met, the registering trademark owner receives certain benefts, useful in infringement litigation. See, e. g. , Iancu Brunetti , 588 U. S. –––, ––– (2019) (noting that “reg- istration constitutes `prima facie evidence' of the mark's va- lidity”). But the owner of even an unregistered trademark can “use [the mark] in commerce and enforce it against in- fringers.” Ibid.
The Lanham Act also creates a federal cause of action for trademark infringement. In the typical case, the owner of a mark sues someone using a mark that closely resembles its own. The court must decide whether the defendant's use is “likely to cause confusion, or to cause mistake, or to deceive.” §§ 1114(1)(A), 1125(a)(1)(A). The “keystone” in that statu- tory standard is “likelihood of confusion.” See 4 McCarthy § 23:1. And the single type of confusion most commonly in trademark law's sights is confusion “about the source of a product or service.” Moseley V Secret Catalogue, Inc. , 537 U. S. 418, 428 (2003); see 4 McCarthy § 23:5. Confusion as to source is the bête noire of trademark law—the thing that stands directly opposed to the law's twin goals of facili- tating consumers' choice and protecting producers' good will. Finally, the Lanham Act creates a cause of action for the dilution of famous marks, which can succeed without likeli- hood of confusion. See § 1125(c); Moseley , 537 U. S., at 431. A famous mark is one “widely recognized” by the public as “designati[ng the] source” of the mark owner's goods. § 1125(c)(2)(A). Dilution of such a mark can occur “by tar- nishment” (as well as by “blurring,” not relevant here). § 1125(c)(1). As the statute describes the idea, an “associa- tion arising from the similarity between” two marks—one of them famous—may “harm[ ] the reputation of the famous mark,” and thus make the other mark's owner liable. § 1125(c)(2)(C). But there are “[e]xclusions”—categories of activity not “actionable as dilution.” § 1125(c)(3). One ex- clusion protects any “noncommercial use of a mark. ” § 1125(c)(3)(C). Another protects a “fair use” of a mark “in connection with . . . parodying, criticizing, or commenting upon the famous mark owner or [its] goods.” § 1125(c) (3)(A)(ii). The fair-use exclusion, though, comes with a ca- veat. A defendant cannot get its beneft—even if engaging in parody, criticism, or commentary—when using the similar- looking mark “as a designation of source for the [defendant's] own goods.” § 1125(c)(3)(A). In other words, the exclusion does not apply if the defendant uses the similar mark as a mark.
B A bottle of Jack Daniel's—no, Jack Daniel's Old No. 7 Ten- nessee Sour Mash Whiskey—boasts a fair number of trade- marks. Recall what the bottle looks like (or better yet, re- trieve a bottle from wherever you keep liquor; it's probably there):
“Jack Daniel's” is a registered trademark, as is “Old No. 7.” So too the arched Jack Daniel's logo. And the stylized label with fligree ( i. e. , twirling white lines). Finally, what might be thought of as the platform for all those marks—the whis- key's distinctive square bottle—is itself registered.
VIP is a dog toy company, making and selling a product line of chewable rubber toys that it calls “Silly Squeakers.” (Yes, they squeak when bitten.) Most of the toys in the line are designed to look like—and to parody—popular beverage brands. There are, to take a sampling, Dos Perros (cf. Dos Equis), Smella Arpaw (cf. Stella Artois), and Doggie Walker (cf. Johnnie Walker). VIP has registered trademarks in all those names, as in the umbrella term “Silly Squeakers.”
In 2014, VIP added the Bad Spaniels toy to the line. VIP did not apply to register the name, or any other feature of, Bad Spaniels. But according to its complaint (further ad- dressed below), VIP both “own[s]” and “use[s]” the “ `Bad Spaniels' trademark and trade dress.” App. 3, 11; see infra , at 150, 160. And Bad Spaniels' trade dress, like the dress of many Silly Squeakers toys, is designed to evoke a distinctive beverage bottle-with-label. Even if you didn't already know, you'd probably not have much trouble identifying which one.
Bad Spaniels is about the same size and shape as an ordinary bottle of Jack Daniel's. The faux bottle, like the original, has a black label with stylized white text and a white fli- greed border. The words “Bad Spaniels” replace “Jack Dan- iel's” in a like font and arch. Above the arch is an image of a spaniel. (This is a dog toy, after all.) Below the arch, “The Old No. 2 On Your Tennessee Carpet” replaces “Old No. 7 Tennessee Sour Mash Whiskey” in similar graphic form. The small print at the bottom substitutes “43% poo by vol.” and “100% smelly” for “40% alc. by vol. (80 proof).”
The toy is packaged for sale with a cardboard hangtag (so it can be hung on store shelves). Here is the back of the hangtag:
At the bottom is a disclaimer: “This product is not affliated with Jack Daniel Distillery.” In the middle are some warn- ings and guarantees. And at the top, most relevant here, are two product logos—on the left for the Silly Squeakers line, and on the right for the Bad Spaniels toy.
Soon after Bad Spaniels hit the market, Jack Daniel's sent VIP a letter demanding that it stop selling the product. VIP responded by bringing this suit, seeking a declaratory judgment that Bad Spaniels neither infringed nor diluted Jack Daniel's trademarks. The complaint alleged, among other things, that VIP is “the owner of all rights in its `Bad Spaniels' trademark and trade dress for its durable rubber squeaky novelty dog toy.” App. 3; see supra , at 149. Jack Daniel's counterclaimed under the Lanham Act for both trademark infringement and trademark dilution by tarnishment.
VIP moved for summary judgment on both claims. First, VIP argued that Jack Daniel's infringement claim failed under a threshold test derived from the First Amendment to protect “expressive works”—like (VIP said) the Bad Spaniels toy. When those works are involved, VIP con- tended, the so-called Rogers test requires dismissal of an in- fringement claim at the outset unless the complainant can show one of two things: that the challenged use of a mark “has no artistic relevance to the underlying work” or that it “explicitly misleads as to the source or the content of the work.” Rogers Grimaldi , 875 F. 2d 994, 999 (CA2 1989) (Newman, J.). Because Jack Daniel's could make neither showing, VIP argued, the likelihood-of-confusion issue be- came irrelevant. Second, VIP urged that Jack Daniel's could not succeed on a dilution claim because Bad Spaniels was a “parody[ ]” of Jack Daniel's, and therefore made “fair use” of its famous marks. § 1125(c)(3)(A)(ii). The District Court rejected both contentions for a common reason: because VIP had used the cribbed Jack Daniel's fea- tures as trademarks—that is, to identify the source of its own products. In the court's view, when “another's trademark is used for source identifcation”—as the court thought was true here—the threshold Rogers test does not apply. App. to Pet. for Cert. 89a. Instead, the suit must address the “standard” infringement question: whether the use is “likely to cause consumer confusion.” Ibid. And likewise, VIP could not invoke the dilution provision's fair-use exclusion. Parodies fall within that exclusion, the court explained, only when the uses they make of famous marks do not serve as “a designation of source for the [alleged diluter's] own goods.” Id. , at 104a (quoting § 1125(c)(3)(A)).
The case thus proceeded to a bench trial, where Jack Dan- iel's prevailed. The District Court found, based largely on survey evidence, that consumers were likely to be confused about the source of the Bad Spaniels toy. See 291 F. Supp. 3d 891, 906–911 (D Ariz. 2018). And the court thought that the toy, by creating “negative associations” with “canine ex- crement,” would cause Jack Daniel's “reputational harm.” Id. , at 903, 905.
But the Court of Appeals for the Ninth Circuit reversed, ruling that the District Court had gotten the pretrial legal issues wrong. In the Ninth Circuit's view, the infringement claim was subject to the threshold Rogers test because Bad Spaniels is an “expressive work”: Although just a dog toy, and “surely not the equivalent of the Mona Lisa ,” it “com- municates a humorous message.” 953 F. 3d 1170, 1175 (2020) (internal quotation marks omitted). The Court of Appeals therefore returned the case to the District Court to decide whether Jack Daniel's could satisfy either of Rogers ' two prongs. And the Ninth Circuit awarded judgment on the dilution claim to VIP. The court did not address the statu- tory exclusion for parody and other fair use, as the District Court had. Instead, the Court of Appeals held that the ex- clusion for “noncommercial use” shielded VIP from liability. § 1125(c)(3)(C). The “use of a mark may be `noncommer- cial,' ” the court reasoned, “even if used to sell a product.” 953 F. 3d, at 1176 (internal quotation marks omitted). And here it was so, the court found, because it “parodies” and “comments humorously” on Jack Daniel's. Id. , at 1175; see id. , at 1176.
On remand, the District Court found that Jack Daniel's could not satisfy either prong of Rogers , and so granted sum- mary judgment to VIP on infringement. Jack Daniel's ap- pealed, and the Ninth Circuit summarily affrmed.
We then granted certiorari to consider the Court of Appeals' rulings on both infringement and dilution. 598 U. S. ––– (2022).
II Our frst and more substantial question concerns Jack Daniel's infringement claim: Should the company have had to satisfy the Rogers threshold test before the case could proceed to the Lanham Act's likelihood-of-confusion inquiry? [1] The parties address that issue in the broadest possible way, either attacking or defending Rogers in all its possible applications. Today, we choose a narrower path. Without deciding whether Rogers has merit in other con- texts, we hold that it does not when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer's own goods. See § 1127; supra , at 145–146. VIP used the marks derived from Jack Daniel's in that way, so the infringement claim here rises or falls on likelihood of confusion. But that in- quiry is not blind to the expressive aspect of the Bad Span- iels toy that the Ninth Circuit highlighted. Beyond source designation, VIP uses the marks at issue in an effort to “par- ody” or “make fun” of Jack Daniel's. Tr. of Oral Arg. 58, 66. And that kind of message matters in assessing confusion be- cause consumers are not so likely to think that the maker of a mocked product is itself doing the mocking.
A To see why the Rogers test does not apply here, frst con- sider the case from which it emerged. The defendants there had produced and distributed a flm by Federico Fellini titled “Ginger and Fred” about two fctional Italian cabaret danc- ers (Pippo and Amelia) who imitated Ginger Rogers and Fred Astaire. When the flm was released in the United States, Ginger Rogers objected under the Lanham Act to the use of her name. The Second Circuit rejected the claim. It reasoned that the titles of “artistic works,” like the works themselves, have an “expressive element” implicating “First Amendment values.” 875 F. 2d, at 998. And at the same time, such names posed only a “slight risk” of confusing con- sumers about either “the source or the content of the work.” [1] To be clear, when we refer to “the Rogers threshold test,” we mean any threshold First Amendment flter.
v. Id. , at 999–1000. So, the court concluded, a threshold flter was appropriate. When a title “with at least some artistic relevance” was not “explicitly misleading as to source or con- tent,” the claim could not go forward. Ibid. But the court made clear that it was not announcing a general rule. In the typical case, the court thought, the name of a product was more likely to indicate its source, and to be taken by consumers in just that way. See id. , at 1000.
Over the decades, the lower courts adopting Rogers have confned it to similar cases, in which a trademark is used not to designate a work's source, but solely to perform some other expressive function. So, for example, when the toy- maker Mattel sued a band over the song “Barbie Girl”—with lyrics including “Life in plastic, it's fantastic” and “I'm a blond bimbo girl, in a fantasy world”—the Ninth Circuit ap- plied Rogers . Mattel, Inc. v. MCA Records, Inc. , 296 F. 3d 894, 901 (2002). That was because, the court reasoned, the band's use of the Barbie name was “not [as] a source identi- fer”: The use did not “speak[ ] to [the song's] origin.” Id. , at 900, 902; see id. , at 902 (a consumer would no more think that the song was “produced by Mattel” than would, “upon hearing Janis Joplin croon `Oh Lord, won't you buy me a Mercedes Benz?,' . . . suspect that she and the carmaker had entered into a joint venture”). Similarly, the Eleventh Cir- cuit dismissed a suit under Rogers when a sports artist de- picted the Crimson Tide's trademarked football uniforms solely to “memorialize” a notable event in “football history.” University of Ala. Bd. of Trustees New Life Art, Inc. , 683 F. 3d 1266, 1279 (2012). And when Louis Vuitton sued because a character in the flm The Hangover: Part II de- scribed his luggage as a “Louis Vuitton” (though pronounc- ing it Lewis ), a district court dismissed the complaint under Rogers . See Louis Vuitton Malletier S. A. Warner Bros. Entertainment Inc. , 868 F. Supp. 2d 172 (SDNY 2012). All parties agreed that the flm was not using the Louis Vuitton mark as its “own identifying trademark.” Id. , at 180 (inter- nal quotation marks omitted). When that is so, the court reasoned, “confusion will usually be unlikely,” and the “inter- est in free expression” counsels in favor of avoiding the standard Lanham Act test. Ibid.
The same courts, though, routinely conduct likelihood-of- confusion analysis, without mentioning Rogers , when trade- marks are used as trademarks— i. e. , to designate source. See, e. g. , JL Beverage Co., LLC v. Jim Beam Brands Co. , 828 F. 3d 1098, 1102–1103, 1106 (CA9 2016); PlayNation Play Systems, Inc. v. Velex Corp. , 924 F. 3d 1159, 1164–1165 (CA11 2019). And the Second Circuit— Rogers ' home court—has made especially clear that Rogers does not apply in that con- text. For example, that court held that an offshoot political group's use of the trademark “United We Stand America” got no Rogers help because the use was as a source identifer. See United We Stand Am., Inc. United We Stand, Am. New York, Inc. , 128 F. 3d 86, 93 (1997). True, that slogan had expressive content. But the defendant group, the court reasoned, was using it “as a mark,” to suggest the “same source identifcation” as the original “political movement.” Ibid. And similarly, the Second Circuit (indeed, the judge who authored Rogers ) rejected a motorcycle mechanic's view that his modifed version of Harley Davidson's bar-and-shield logo was an expressive parody entitled to Rogers ' protection. See Harley-Davidson, Inc. Grottanelli , 164 F. 3d 806, 812– 813 (1999). The court acknowledged that the mechanic's adapted logo conveyed a “somewhat humorous[ ]” message. Id. , at 813. But his use of the logo was a quintessential “trademark use”: to brand his “repair and parts business”— through signage, a newsletter, and T-shirts—with images “similar” to Harley-Davidson's. Id. , at 809, 812–813.
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 Rog- ers 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.” S. Dogan & M. Lemley, Grounding Trademark Law Through Trademark Use, 92 Iowa L. Rev. 1669, 1684 (2007); see id. , at 1683–1684, and n. 58. The test has not insulated from ordinary trademark scrutiny the use of trademarks as trade- marks, “to identify or brand [a defendant's] goods or serv- ices.” Id. , at 1683.
We offer as one last example of that limitation a case with a striking resemblance to this one. It too involved dog products, though perfumes rather than toys. Yes, the de- fendant sold “a line of pet perfumes whose names parody elegant brands sold for human consumption.” Tommy Hil- fger Licensing, Inc. Nature Labs, LLC , 221 F. Supp. 2d 410, 412 (SDNY 2002) (Mukasey, J.). The product at issue was named Timmy Holedigger—which Tommy Hilfger didn't much like. The defendant asked for application of Rogers . The court declined it, relying on Harley-Davidson . See 221 F. Supp. 2d, at 414. Rogers , the court explained, kicks in when a suit involves solely “nontrademark uses of [a] mark—that is, where the trademark is not being used to indicate the source or origin” of a product, but only to convey a different kind of message. 221 F. Supp. 2d, at 414. When, instead, the use is “at least in part” for “source identifca- tion”—when the defendant may be “trading on the good will of the trademark owner to market its own goods”— Rogers has no proper role. 221 F. Supp. 2d, at 414–415. And that is so, the court continued, even if the defendant is also “mak- ing an expressive comment,” including a parody of a differ- ent product. Id ., at 415. The defendant is still “mak[ing] trademark use of another's mark,” and must meet an in- fringement claim on the usual battleground of “likelihood of confusion.” Id. , at 416.
That conclusion fts trademark law, and refects its primary mission. From its defnition of “trademark” onward, the Lanham Act views marks as source identifers—as things that function to “indicate the source” of goods, and so to “dis- 157 tinguish” them from ones “manufactured or sold by others.” § 1127; see supra , at 145–146. The cardinal sin under the law, as described earlier, is to undermine that function. See supra , at 146. It is to confuse consumers about source—to make (some of) them think that one producer's products are another's. And that kind of confusion is most likely to arise when someone uses another's trademark as a trademark— meaning, again, as a source identifer—rather than for some other expressive function. To adapt one of the cases noted above: Suppose a flmmaker uses a Louis Vuitton suitcase to convey something about a character (he is the kind of person who wants to be seen with the product but doesn't know how to pronounce its name). See supra , at 154. Now think about a different scenario: A luggage manufacturer uses an ever-so-slightly modifed LV logo to make inroads in the suit- case market. The greater likelihood of confusion inheres in the latter use, because it is the one conveying information (or misinformation) about who is responsible for a product. That kind of use “implicate[s] the core concerns of trademark law” and creates “the paradigmatic infringement case.” G. Dinwoodie & M. Janis, Confusion Over Use: Contextualism in Trademark Law, 92 Iowa L. Rev. 1597, 1636 (2007). So the Rogers test—which offers an escape from the likelihood- of-confusion inquiry and a shortcut to dismissal—has no proper application.
Nor does that result change because the use of a mark has other expressive content— i. e. , because it conveys some message on top of source. Here is where we most dramati- cally part ways with the Ninth Circuit, which thought that [2] That is not to say (far from it) that every infringement case involving a source-identifying use requires full-scale litigation. Some of those uses will not present any plausible likelihood of confusion—because of dissimi- larity in the marks or various contextual considerations. And if, in a given case, a plaintiff fails to plausibly allege a likelihood of confusion, the district court should dismiss the complaint under Federal Rule of Civil Procedure 12(b)(6). See 6 McCarthy § 32:121.75 (providing examples). because Bad Spaniels “communicates a humorous message,” it is automatically entitled to Rogers ' protection. 953 F. 3d, at 1175 (internal quotation marks omitted). On that view, Rogers might take over much of the world. For trademarks are often expressive, in any number of ways. Consider how one liqueur brand's trade dress (beyond identifying source) tells a story, with a bottle in the shape of a friar's habit con- noting the product's olden monastic roots:
Or take a band name that “not only identifes the band but expresses a view about social issues.” Tam , 582 U. S., at 245 (opinion of Alito , J.) (discussing “The Slants”). Or note how a mark can both function as a mark and have parodic content—as the court found in the Hilfger/Holedigger litiga- tion. See supra , at 156. The examples could go on and on. As a leading treatise puts the point, the Ninth Circuit's expansion of Rogers “potentially encompasses just about ev- erything” because names, phrases, symbols, designs, and their varied combinations often “contain some `expressive' message” unrelated to source. 6 McCarthy § 31:144.50. That message may well be relevant in assessing the likeli- hood of confusion between two marks, as we address below. See infra , at 161. But few cases would even get to the likelihood-of-confusion inquiry if all expressive content trig- gered the Rogers flter. In that event, the Rogers exception would become the general rule, in confict with courts' long- standing view of trademark law.
The Ninth Circuit was mistaken to believe that the First Amendment demanded such a result . The court thought that trademark law would otherwise “fail[ ] to account for the full weight of the public's interest in free expression.” 953 F. 3d, at 1174. But as the Mattel ( i. e. , Barbie) court noted, when a challenged trademark use functions as “source-identifying,” trademark rights “play well with the First Amendment”: “Whatever frst amendment rights you may have in calling the brew you make in your bathtub `Pepsi' ” are “outweighed by the buyer's interest in not being fooled into buying it.” 296 F. 3d, at 900. Or in less colorful terms: “[T]o the extent a trademark is confusing” as to a product's source “the law can protect consumers and trade- mark owners.” Tam , 582 U. S., at 252 (Kennedy, J., concur- ring in part and concurring in judgment); see Friedman v. Rogers , 440 U. S. 1, 15 (1979) (rejecting a First Amendment challenge to a law restricting trade names because of the “substantial” interest in “protecting the public from [their] deceptive and misleading use”). Or yet again, in an espe- cially clear rendering: “[T]he trademark law generally pre- vails over the First Amendment” when “another's trademark (or a confusingly similar mark) is used without permission” as a means of “source identifcation.” Yankee Publishing Inc. News Am. Publishing Inc. , 809 F. Supp. 267, 276 (SDNY 1992) (Leval, J.) (emphasis deleted). So for those uses, the First Amendment does not demand a threshold in- quiry like the Rogers test. When a mark is used as a mark (except, potentially, in rare situations), the likelihood-of- confusion inquiry does enough work to account for the inter- est in free expression.
B Here, the District Court correctly held that “VIP uses its Bad Spaniels trademark and trade dress as source identifers v. of its dog toy.” See App. to Pet. for Cert. 105a. In fact, VIP conceded that point below. In its complaint, VIP al- leged that it both “own[s] and “use[s]” the “ `Bad Spaniels' trademark and trade dress for its durable rubber squeaky novelty dog toy.” App. 3, 11. The company thus repre- sented in this very suit that the mark and dress, although not registered, are used to “identify and distinguish [VIP's] goods” and to “indicate [their] source.” § 1127. (Registration of marks, you'll recall, is optional. See supra , at 146–147.)
In this Court, VIP says the complaint was a mere “form allegation”—a matter of “rote.” Tr. of Oral Arg. 73. But even if we knew what that meant, VIP has said and done more in the same direction. First, there is the way the product is marketed. On the hangtag, the Bad Spaniels logo sits opposite the concededly trademarked Silly Squeakers logo, with both appearing to serve the same source- identifying function. See supra , at 150. And second, there is VIP's practice as to other products in the Silly Squeakers line. The company has consistently argued in court that it owns, though has never registered, the trademark and trade dress in dog toys like “Jose Perro” (cf. Jose Cuervo) and “HeinieSniff'n” (cf. Heineken). [3] And it has chosen to regis- ter the names of still other dog toys, including Dos Perros (#6176781), Smella Arpaw (#6262975), and Doggie Walker (#6213816). See supra , at 149. Put all that together, and more than “form” or “rote” emerges: VIP's conduct is its own admission that it is using the Bad Spaniels (née Jack Daniel's) trademarks as trademarks, to identify product source. [3] See, e. g. , VIP Products, LLC v. Tequila Cuervo La Rojena, S. A. de C. V. , No. 20–cv–0319 (D Ariz., Feb. 11, 2020), ECF Doc. 1, p. 3 (“Jose Perro”); VIP Products, LLC Heineken USA, Inc. , No. 13–cv–0319 (D Ariz., Feb. 13, 2013), ECF Doc. 1, pp. 3–4 (“HeinieSniff'n”); VIP Products, LLC v. Pabst Brewing Co. , No. 14–cv–2084 (D Ariz., Sept. 19, 2014), ECF Doc. 1, pp. 3–4 (“Blue Cats Trippin”) (cf. Pabst Blue Ribbon); VIP Prod- ucts, LLC Champagne Louis Roederer, S. A. , No. 13–cv–2365 (D Ariz., Nov. 18, 2013), ECF Doc. 1, pp. 3–4 (“Crispaw”) (cf. Cristal). Because that is so, the only question in this suit going for- ward is whether the Bad Spaniels marks are likely to cause confusion. There is no threshold test working to kick out all cases involving “expressive works.” But a trademark's expressive message—particularly a parodic one, as VIP as- serts—may properly fgure in assessing the likelihood of con- fusion. See, e. g. , Louis Vuitton Malletier S. A. Haute Diggity Dog, LLC , 507 F. 3d 252, 265 (CA4 2007) (Parody “infuences the way in which the [likelihood-of-confusion] fac- tors are applied”); Brief for United States as Amicus Curiae 17–22 (same). A parody must “conjure up” “enough of [an] original to make the object of its critical wit recognizable.” Campbell v. Acuff-Rose Music, Inc. , 510 U. S. 569, 588 (1994) (internal quotation marks omitted). Yet to succeed, the par- ody must also create contrasts, so that its message of ridicule or pointed humor comes clear. And once that is done ( if that is done), a parody is not often likely to create confusion. Self-deprecation is one thing; self-mockery far less ordinary. So although VIP's effort to ridicule Jack Daniel's does not justify use of the Rogers test, it may make a difference in the standard trademark analysis. Consistent with our ordinary practice, we remand that issue to the courts below. See Cutter Wilkinson , 544 U. S. 709, 718, n. 7 (2005) (noting that this Court is generally “a court of review, not of frst view”).
III Our second question, more easily dispatched, concerns Jack Daniel's claim of dilution by tarnishment (for the link- age of its whiskey to less savory substances). Recall that the Ninth Circuit dismissed that claim based on one of the Lanham Act's “[e]xclusions” from dilution liability—for “[a]ny noncommercial use of a mark.” § 1125(c)(3)(C); see supra , at 152. On the court's view, the “use of a mark may be `noncommercial' even if used to sell a product.” 953 F. 3d, at 1176 (internal quotation marks omitted). And VIP's use is so, the court continued, because it “parodies” and “con- vey[s] a humorous message” about Jack Daniel's. Id. , at 1175–1176. We need not express a view on the frst step of that reasoning because we think the second step wrong. However wide the scope of the “noncommercial use” exclu- sion, it cannot include, as the Ninth Circuit thought, every parody or humorous commentary.
To begin to see why, consider the scope of another of the Lanham Act's exclusions—this one for “[a]ny fair use.” As described earlier, the “fair use” exclusion specifcally covers uses “parodying, criticizing, or commenting upon” a famous mark owner. § 1125(c)(3)(A)(ii); see supra , at 147. But not in every circumstance. Critically, the fair-use exclusion has its own exclusion: It does not apply when the use is “as a designation of source for the person's own goods or services.” § 1125(c)(3)(A). In that event, no parody, criticism, or com- mentary will rescue the alleged dilutor. It will be subject to liability regardless.
The problem with the Ninth Circuit's approach is that it reverses that statutorily directed result, as this case illus- trates. Given the fair-use provision's carve-out, parody (and criticism and commentary, humorous or otherwise) is exempt from liability only if not used to designate source. Whereas on the Ninth Circuit's view, parody (and so forth) is exempt always—regardless whether it designates source. The ex- pansive view of the “noncommercial use” exclusion effec- tively nullifes Congress's express limit on the fair-use exclu- sion for parody, etc. Just consider how the Ninth Circuit's construction played out here. The District Court had rightly concluded that because VIP used the challenged marks as source identifers, it could not beneft from the fair- use exclusion for parody. See App. to Pet. for Cert. 105a; supra , at 151, 159–160. The Ninth Circuit took no issue with that ruling. But it shielded VIP's parodic uses anyway. In doing so, the court negated Congress's judgment about when—and when not—parody (and criticism and commen- tary) is excluded from dilution liability.
Sotomayor, J. , concurring IV Today's opinion is narrow. We do not decide whether the Rogers test is ever appropriate, or how far the “noncom- mercial use” exclusion goes. On infringement, we hold only that Rogers does not apply when the challenged use of a mark is as a mark. On dilution, we hold only that the noncommercial exclusion does not shield parody or other commentary when its use of a mark is similarly source- identifying. It is no coincidence that both our holdings turn on whether the use of a mark is serving a source-designation function. The Lanham Act makes that fact crucial, in its effort to ensure that consumers can tell where goods come from.
For the reasons stated, we vacate the judgment below and remand for further proceedings consistent with this opinion.
It is so ordered. Justice Sotomayor , with whom Justice Alito joins, concurring. I join the Court's opinion in full. I write separately to emphasize that in the context of parodies and potentially other uses implicating First Amendment concerns, courts should treat the results of surveys with particular caution. As petitioner did here, plaintiffs in trademark infringement cases often commission surveys that purport to show that consumers are likely to be confused by an allegedly infring- ing product. Like any other evidence, surveys should be understood as merely one piece of the multifaceted likelihood of confusion analysis. See, e. g. , Uncommon, LLC v. Spigen, Inc. , 926 F. 3d 409, 425 (CA7 2019). Courts should also care- fully assess the methodology and representativeness of sur- veys, as many lower courts already do. See, e. g. , Water Pik, Inc. Med-Systems, Inc. , 726 F. 3d 1136, 1144–1150 (CA10 2013); Starbucks Corp. Wolfe's Borough Coffee, Inc. , 588 F. 3d 97, 117 (CA2 2009).
v. Sotomayor, J. , concurring
When an alleged trademark infringement involves a par- ody, however, there is particular risk in giving uncritical or undue weight to surveys. Survey answers may refect a mistaken belief among some survey respondents that all par- odies require permission from the owner of the parodied mark. Some of the answers to the survey in this case illus- trate this potential. See App. 81–82, n. 25 (“ `I'm sure the dog toy company that made this toy had to get [Jack Daniel's] permission and legal rights to essentially copy the[ir] prod- uct in dog toy form' ”); ibid. (“ `The bottle is mimicked after the Jack Daniel BBQ sauce. So they would hold the patent therefore you would have to ask permission to use the image' ”); see also Anheuser-Busch, Inc. Balducci Publica- tions , 28 F. 3d 769, 772–773, 775 (CA8 1994) (describing a similar situation). Plaintiffs can point to this misunder- standing of the legal framework as evidence of consumer con- fusion. Cleverly designed surveys could also prompt such confusion by making consumers think about complex legal questions around permission that would not have arisen or- ganically out in the world.
Allowing such survey results to drive the infringement analysis would risk silencing a great many parodies, even ones that by other metrics are unlikely to result in the confu- sion about sourcing that is the core concern of the Lanham Act. See ante , at 147, 153, 156–157. Well-heeled brands with the resources to commission surveys would be handed an effective veto over mockery. After all, “[n]o one likes to be the butt of a joke, not even a trademark.” 6 J. McCarthy, Trademarks and Unfair Competition § 31:153 (5th ed. 2023). This would upset the Lanham Act's careful balancing of “the needs of merchants for identifcation as the provider of goods with the needs of society for free communication and discus- sion.” P. Leval, Trademark: Champion of Free Speech, 27 Colum. J. L. & Arts 187, 210 (2004). Courts should thus ensure surveys do not completely displace other likelihood- of-confusion factors, which may more accurately track the Gorsuch, J. , concurring
experiences of actual consumers in the marketplace. Courts should also be attentive to ways in which surveys may artifcially prompt such confusion about the law or fail to suffciently control for it.
Justice Gorsuch , with whom Justice Thomas and Jus- tice Barrett join, concurring.
I am pleased to join the Court's opinion. I write sepa- rately only to underscore that lower courts should handle Rogers Grimaldi , 875 F. 2d 994 (CA2 1989), with care. 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 Rog- ers 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, per- haps inspired by constitutional-avoidance doctrine? Id. , at 998. For another thing, it is not obvious that Rogers is cor- rect in all its particulars—certainly, the Solicitor General raises serious questions about the decision. See Brief for United States as Amicus Curiae 23–28. All this remains for resolution another day, ante , at 155, and lower courts should be attuned to that fact.
*28 Reporter’s Note The attached opinion has been revised to refect the usual publication and citation style of the United States Reports. The revised pagination makes available the offcial United States Reports citation in advance of publication. The syllabus has been prepared by the Reporter of Decisions for the convenience of the reader and constitutes no part of the opinion of the Court. A list of counsel who argued or fled briefs in this case, and who were members of the bar of this Court at the time this case was argued, has been inserted following the syllabus. Other revisions may include adjustments to formatting, captions, citation form, and any errant punctuation. The following additional edits were made: p. 154, line 4 from bottom, “ Mallatier ” is changed to “ Malletier ”