June 12, 2023

Supreme Court Rules on Rogers Test Regarding Parodies of Others' Trademarks

The First Amendment-Friendly Test Doesn't Apply to Uses "as a Trademark"
Holland & Knight Alert
Thomas W. Brooke | Cynthia A. Gierhart

The U.S. Supreme Court on June 8, 2023, ruled unanimously that a parody of a Jack Daniels whiskey bottle in the form of a dog chew toy was not entitled to receive heightened protections even if it contained artistic or expressive content. The use of Jack Daniels' trademarked bottle shape and a confusingly similar name, "Bad Spaniels," functioned as a trademark and therefore must be analyzed under the standard likelihood-of-confusion analysis that applies to typical trademark infringement claims. See Jack Daniels Properties, Inc. v. VIP Products LLC, No. 22-148 (U.S. June 8, 2023).

The Rogers Test

The Rogers test was created by the U.S. Court of Appeals for the Second Circuit in 1989 in response to a trademark infringement and right of publicity claim by Ginger Rogers for the use of her name in a film title, "Ginger and Fred." See Rogers v. Grimaldi, 875 F. 2d 994, 999 (2d Cir. 1989). The Second Circuit held that the standard likelihood-of-confusion analysis was not applicable to expressive works, which should receive heightened First Amendment protections. Instead of likelihood of confusion, the Second Circuit invented a two-step test, known as the Rogers test: 1) whether use of another's trademark in an expressive work has some "artistic relevance" to the underlying work and 2) whether the use "explicitly misleads as to the source or the content of the work." Id.

The Supreme Court cabined the application of the Rogers test but did not do away with it completely. The court held that the Rogers test does not apply to uses of "a trademark as a trademark." At its core, a trademark is intended to identify the source of goods or services, so that consumers can recognize a brand behind a product or service. The maker of the dog chew toy was using the name "Bad Spaniels" and the signature Jack Daniels whiskey bottle shape as a source identifier, i.e., as a trademark. The court held that the Rogers test does not apply to uses of another's mark when used as a source identifier. Instead, the standard likelihood of confusion analysis should apply.

The decision follows closely on the heels of the "MetaBirkins" case in which the U.S. District Court for the Southern District of New York held that the Rogers test did apply to nonfungible tokens (NFTs) featuring computer-generated images of Hermes' famous Birkin bags, called "MetaBirkins." See Hermes Int'l v. Rothschild, No. 22-CV-384 (JSR), 2023 WL 1458126, at *5 (S.D.N.Y. Feb. 2, 2023). However, a jury ultimately found that MetaBirkins could not overcome even the heightened Rogers standard, and the use was found to be "explicitly misleading" and infringing on Hermes' trademark rights. See Hermes Int'l v. Rothschild, 22-cv-384 (JSR) (Feb. 8, 2023).

Thus, while the Rogers test seemingly remains applicable to traditionally expressive works – e.g., films, songs and books – it does not apply to uses of others' trademarks on commercial goods when used "as a trademark" to identify a source of the goods. The ruling in Jack Daniels should serve as a warning to commercial copyists attempting to trade on the goodwill of established brand owners.

For more information, contact the authors.

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