VIP Products, whose line of “Silly Squeakers” dog toys includes a chewable “Bad Spaniels” toy in a shape comparable to a bottle of Jack Daniel’s whiskey, sought a declaratory judgment of non-infringement and non-dilution of Jack Daniel’s trademark. The district court found both infringement and dilution, but the Ninth Circuit reversed on the basis of the standard for assessing likelihood of confusion originated by the Second Circuit in Rogers v. Grimaldi, which applies to use of trademarks in artistic and expressive works. Following additional proceedings in the district court and court of appeals, Jack Daniel’s petitioned the Supreme Court for review. Before the Supreme Court, Jack Daniels argued that the Supreme Court should overrule Rogers v. Grimaldi, even as applied to inherently expressive works such as movies and books.
Representing three people who create and sell parodies of trademarks on t-shirts and other items, Public Citizen filed an amicus brief to explain that Rogers v. Grimaldi provides needed protection for the expressive use of trademarks in noncommercial speech, allowing expressive users to end litigation without undergoing the huge expense of defending a trademark case through discovery, summary judgment, and trial. The brief also explains that the standard is properly applied to ordinary commercial products on which trademark parodies are printed for the purpose of noncommercial speech about the trademark owner.
In a unanimous decision issued in June 2022, the Court held that the Rogers test does not apply when an alleged infringer uses a trademark as a designation of source for the infringer’s own goods, and it remanded the case for consideration of whether “Bad Spaniels” caused consumer confusion as to source.