JACK DANIEL’S PROPERTIES, INC. v. VIP PRODUCTS LLC
No. 22–148
SUPREME COURT OF THE UNITED STATES
June 8, 2023
599 U. S. 140
Kagan, J.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT. Argued March 22, 2023—Decided June 8, 2023
The Lanham Act, the core federal trademark statute, defnes a trademark by
Respondent VIP Products makes a squeaky, chewable dog toy designed 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 Spaniels.” And “Old No. 7 Brand Tennessee Sour Mash Whiskey” turns into “The Old No. 2 On Your Tennessee Carpet.” These jokes did not impress 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 demanded 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 dilution. At summary judgment, VIP argued that Jack Daniel‘s infringement 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 v. Grimaldi, 875 F. 2d 994. When “expressive works” are involved, VIP contended, that test requires dismissal of an infringement claim at the outset 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 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.
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 invocation 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
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 expressive function. See, e. g., Mattel, Inc. v. 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 used as trademarks—i. e., to designate source. See, e. g., Tommy Hilfger Licensing, Inc. v. 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 insulated 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 trademark. 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 trademark and trade dress as source identifers. And VIP has said and done more in the same direction with respect to Bad Spaniels and other similar products. The only question remaining is whether the Bad Spaniels trademarks are likely to cause confusion. Although VIP‘s effort to parody 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 noncommerical use of a mark,”
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. GORSUCH, 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. Nicholson, 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 General 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. Bellamy, and Vail C. Cloar.*
Opinion of the Court
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 its label. And it believed Bad Spaniels had both infringed and diluted those trademarks. Bad Spaniels had infringed the marks, the argument ran, by leading consumers to think that Jack Daniel‘s had created, or was otherwise responsible for, the dog toy. And Bad Spaniels had diluted 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 confusion, 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 Spaniels toy. And that test knocked out Jack Daniel‘s claim, whatever the likelihood of confusion. Likewise, Jack‘s dilution claim failed—though on that issue the problem was statutory. The trademark law provides that the “noncommercial” use of a mark cannot count as dilution.
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 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. The dilution issue is more simply addressed. The use of a mark does not count as noncommercial just because it parodies, or otherwise 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 device, or any combination thereof” that a person uses “to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods.”
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. v. 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 purpose, 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
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.”
Finally, the Lanham Act creates a cause of action for the dilution of famous marks, which can succeed without likelihood of confusion. See
B
A bottle of Jack Daniel‘s—no, Jack Daniel‘s Old No. 7 Tennessee Sour Mash Whiskey—boasts a fair number of trademarks. Recall what the bottle looks like (or better yet, retrieve 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
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 addressed 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 fligreed border. The words “Bad Spaniels” replace “Jack Daniel‘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 warnings 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
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 contended, the so-called Rogers test requires dismissal of an infringement 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 v. 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 became 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.
The District Court rejected both contentions for a common reason: because VIP had used the cribbed Jack Daniel‘s features 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
The case thus proceeded to a bench trial, where Jack Daniel‘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 excrement,” 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 “communicates 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 statutory exclusion for parody and other fair use, as the District Court had. Instead, the Court of Appeals held that the exclusion for “noncommercial use” shielded VIP from liability.
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. Jack Daniel‘s appealed, 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. 966 (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 contexts, 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
A
To see why the Rogers test does not apply here, frst consider 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 dancers (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 consumers about either “the source or the content of the work.”
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 content,” 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.
The same courts, though, routinely conduct likelihood-of-confusion analysis, without mentioning Rogers, when trademarks 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 context. 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. v. 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. v. 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 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.” 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
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 defendant sold “a line of pet perfumes whose names parody elegant brands sold for human consumption.” Tommy Hilfger Licensing, Inc. v. 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. Id., at 414. When, instead, the use is “at least in part” for “source identifcation”—when the defendant may be “trading on the good will of the trademark owner to market its own goods”—Rogers has no proper role. Id., at 414–415. And that is so, the court continued, even if the defendant is also “making an expressive comment,” including a parody of a different product. Id., at 415. The defendant is still “mak[ing] trademark use of another‘s mark,” and must meet an infringement 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- tinguish” them from ones “manufactured or sold by others.”
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 connoting 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 litigation. 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 everything” 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 likelihood 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 trademark owners.” Tam, 582 U. S., at 252 (Kennedy, J., concurring 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 especially clear rendering: “[T]he trademark law generally prevails over the First Amendment” when “another‘s trademark (or a confusingly similar mark) is used
B
Here, the District Court correctly held that “VIP uses its Bad Spaniels trademark and trade dress as source identifers of its dog toy.” See App. to Pet. for Cert. 105a. In fact, VIP conceded that point below. In its complaint, VIP alleged 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 represented 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.”
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 register 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.
Because that is so, the only question in this suit going forward 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 asserts—may properly fgure in assessing the likelihood of confusion. See, e. g., Louis Vuitton Malletier S. A. v. Haute Diggity Dog, LLC, 507 F. 3d 252, 265 (CA4 2007) (Parody “infuences the way in which the [likelihood-of-confusion] factors 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 parody must also create contrasts, so that
III
Our second question, more easily dispatched, concerns Jack Daniel‘s claim of dilution by tarnishment (for the linkage 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.”
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.
The problem with the Ninth Circuit‘s approach is that it reverses that statutorily directed result, as this case illustrates. 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 expansive view of the “noncommercial use” exclusion effectively nullifes Congress‘s express limit on the fair-use exclusion 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 commentary) is excluded from dilution liability.
IV
Today‘s opinion is narrow. We do not decide whether the Rogers test is ever appropriate, or how far the “noncommercial 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
For the reasons stated, we vacate the judgment below and remand for further proceedings consistent with this opinion.
It is so ordered.
JACK DANIEL’S PROPERTIES, INC. v. VIP PRODUCTS LLC
No. 22–148
SUPREME COURT OF THE UNITED STATES
June 8, 2023
599 U. S. 140
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 infringing 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 carefully assess the methodology and representativeness of surveys, as many lower courts already do. See, e. g., Water Pik, Inc. v. Med-Systems, Inc., 726 F. 3d 1136, 1144–1150 (CA10 2013); Starbucks Corp. v. Wolfe‘s Borough Coffee, Inc., 588 F. 3d 97, 117 (CA2 2009).
When an alleged trademark infringement involves a parody, 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 parodies require permission from the owner of the parodied mark. Some of the answers to the survey in this case illustrate 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] product 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. v. Balducci Publications, 28 F. 3d 769, 772–773, 775 (CA8 1994) (describing a similar situation). Plaintiffs can point to this misunderstanding of the legal framework as evidence of consumer confusion. Cleverly designed surveys could also prompt such confusion by making consumers think about complex legal questions around permission that would not have arisen organically 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 confusion 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 discussion.” 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 experiences of actual consumers in the marketplace. Courts should also be attentive to ways in which surveys may
JACK DANIEL’S PROPERTIES, INC. v. VIP PRODUCTS LLC
No. 22–148
SUPREME COURT OF THE UNITED STATES
June 8, 2023
599 U. S. 140
JUSTICE GORSUCH, with whom JUSTICE THOMAS and JUSTICE BARRETT join, concurring.
I am pleased to join the Court‘s opinion. I write separately only to underscore that lower courts should handle Rogers v. 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 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? Id., at 998. 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. 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.