Narrow ‘Bad Spaniels’ Ruling Leaves Wiggle Room for Lower Courts

US Supreme Court unanimity in a Jack Daniel’s Properties Inc. win over a dog toy maker belies the way two concurrences and a footnote pull the narrow opinion in different, broader directions.

A test generally excusing unauthorized trademark use in “expressive works” shouldn’t apply when allegedly infringed trademarks are used as trademarks—to help identify the source of a product—as VIP Products LLC did with their dog toy, the high court held on June 8. That sends the case back to lower courts to decide whether a Jack Daniel’s bottle-shaped, pun-laden chew toy would likely infringe Jack Daniel’s trademark rights by confusing consumers.

But the court didn’t clearly lay out guidelines for what constitutes “use as a trademark,” an area legal professionals say isn’t particularly well defined. It also produced two concurrences pulling in different directions: one warning against relying on consumer surveys to find confusion, another casting doubt on the viability of letting defendants use the Rogers test on expressive works to escape a confusion analysis on infringement allegations in any context.

The way the opinion restricted but didn’t cut off access to the Rogers test—which allows use in expressive works if it has artistic relevance and isn’t explicitly misleading—leaves litigants and courts to navigate untested premises. That could lead to new—potentially conflicting—legal doctrine as district and appeals courts weigh how to define trademark use and potential free speech off-ramps.

“The concurrences, more than in many cases, shed some interesting light on both how the court got where they got, and also where courts might take this. It’s an invitation to take the law in new ways,” IP professor Jacob Noti-Victor of Cardozo Law said.

The Rogers test originated in the Second Circuit’s 1989 decision in Rogers v. Grimaldi, where the court shot down actress Ginger Rogers’ right-of-publicity and Lanham Act false-endorsement claims over the title of the movie “Ginger and Fred.” The test, extended to trademark cases, can allow a defendant to bypass fact-intensive likelihood of consumer confusion analyses.

Noti-Victor said of the court’s new use-based partition for applying that test: “We don’t have a clear threshold trademark use case.”

Rogers proponents argue the test serves as an important escape route from expensive, fact-intensive litigation. Without it, some fear, well-heeled brands could bully smaller entities or creators over unflattering references that don’t risk confusing consumers.

But some, including the US government and three justices, said the test rests on a legal foundation of sand. And brand advocates argue that while expressive works deserve First Amendment protection, companies shouldn’t be allowed to re-purpose others’ trademarks, even altered to make jokes, to ride brand recognition to sales.

What Kind of Use

The Supreme Court rejected the US Court of Appeals for the Ninth Circuit’s application of Rogers to the “Bad Spaniels” dog toys because VIP had used aspects of Jack Daniel’s trademarks as their own trademarks—unlike past successful Rogers defendants. But Justice Elena Kagan‘s explicitly narrow 9-0 opinion refused to say whether Rogers could ever be appropriate.

A concurrence by Justice Neil Gorsuch, joined by Justices Clarence Thomas and Amy Coney Barrett, skeptically eyed Rogers’ very foundation. It said courts “should handle” it “with care,” as “it is not entirely clear where Rogers comes from.”

Some legal professionals said that ducked important First Amendment questions.

“They basically wrote this one-paragraph concurrence to say ‘We would do away with Rogers v. Grimaldi,’” intellectual property law attorney Emily Poler of Poler Legal LLC said. “It’s all well and good for those three judges to say we don’t like Rogers, but I haven’t heard anything from the court saying ‘We should do this instead.’”

Kagan’s central finding is that Rogers can’t apply in cases where the infringer uses the mark as a trademark. But others agreed with Noti-Victor that case law doesn’t clearly guide how to answer that question. Noti-Victor said courts will have to try to articulate a viable standard for determining use, and that threshold test could become a good way to quickly dispose of the kinds of cases where Rogers has typically applied.

But even that may not always be an easy question. VIP used a “Bad Spaniels” logo on a hangtag, a place trademarks are typically found. It’s less clear whether, for example, the whiskey bottle shape of the dog toy alone would constitute “use as a mark.”

“You have to examine whether it’s being used to distinguish the product,” IP attorney Michael R. Graif of Mintz Levin Cohn Ferris Glovsky and Popeo PC said. “Trade dress is particularly susceptible because it’s not hidden.”

There is precedent that guides tribunals reviewing trademark registration decisions based on “failure to function as a trademark.” “Ornamental” features—like a slogan on a shirt—that add appeal to the product rather than indicate who made it don’t function as trademarks. But it’s less clear whether a third party can evoke a brand’s trademark in an “ornamental” manner.

IP attorney Monica Riva Talley of Sterne Kessler Goldstein & Fox PLLC said it “should not be that difficult of an analysis” to decide whether Rogers applies: it applies to “a creative work,” but not “a product on a shelf.”

Surveying the Landscape

Kagan, writing for the court, pushed back in a footnote on the idea that spurious trademark cases couldn’t be disposed of quickly. The court was “far from” saying every alleged infringement even in a trademark use case “requires full-scale litigation,” she said, addressing fears of trademark bullying.

Justice Sonia Sotomayor‘s concurrence, joined by Justice Samuel Alito, cautioned against over-reliance on consumer surveys in a separate nod to the importance of protecting parody. She warned of “cleverly designed surveys” that can “artificially prompt” confusion rooted in legal questions rather than a product’s source. She said surveys shouldn’t “displace” other confusion factors.

She pointed to responses to Jack Daniel’s survey: one said VIP “mimicked” a “Jack Daniel’s BBQ sauce” bottle, so it would have needed permission because of Jack Daniel’s “patent.”

“She’s basically saying, ‘Don’t fall for the trap that the district court fell for where these surveys conflate mistakes of law among the general public with actual confusion,’” Noti-Victor said. Graif also saw it as warning the lower court to reconsider on remand the weight it had given to the survey.

IP attorney J. Rodgers Lunsford III of Smith, Gambrell & Russell LLP disagreed with the extent of Sotomayor’s criticism of surveys, saying they can be powerful evidence. Controls are often used to account for the “8 to 12% of respondents who will be confused about everything,” he said. But he added that attorneys and survey providers should still take heed.

“I would reach out to the three or four best survey people I know and say ‘OK, how are you going to attack this?’” Lunsford said. “Survey experts are going to have to do something to allow survey respondents to understand that one has to call to mind the mark if one is going to parody the mark.”

Free Speech or Free-Riding

Talley bristled at Sotomayor’s downplaying of surveys, arguing they reflect that “consumers are conditioned” to see brands branch out into other products, even in self-deprecating ways. She said simply making a joke shouldn’t let others profit from the value of someone’s brand recognition.

“The reason people buy the product is that it looks like a Jack Daniel’s bottle. All the things a trademark can convey, the goodwill, the reputation, they’re all still there,” she said. “Yes it’s funny, but it’s funny at the expense of the brand you’re mimicking.”

The justices’ narrow opinion barring VIP a Rogers-based win sidestepped broader parody confusion questions. That leaves the task to lower courts—like the one that found Bad Spaniels likely would confuse consumers, or the one that deemed a “Chewy Vuiton” dog chew toy a non-confusing parody.

Graif said that when using or evoking another’s mark, “there’s always an argument that you’re intending to capitalize” on its goodwill, and potentially a survey to back that claim. But the First Amendment also needs to protect expressive use of that mark—a balance the court stayed largely silent on, he said.

“The court hasn’t helped here really at all,” Graif said.

The case is Jack Daniel’s Props. Inc. v. VIP Products LLC, U.S., No. 22-148, decided 6/8/23.