Overview
In the 2020 Ninth Circuit trademark infringement case VIP Products, Inc. v. Jack Daniel’s Properties, Inc., 953 F.3d 1170 (9th Cir. 2020) (the “BAD SPANIELS” case), the court held that a dog toy shaped like a bottle of Jack Daniel’s whiskey and bearing labels parodying Jack Daniel’s trade dress was an “expressive work.” This expanded the definition of “expressive work” to include everyday items that contain a non-zero level of expression rather than just literary or artistic works. As a result, the court found that the dog toy qualified for special First Amendment protections and instructed the lower court to use the “so-called” Rogers test (instead of the traditional likelihood-of-confusion test for trademark infringement), putting a heavy burden on plaintiffs to prevail in cases of trademark infringement. Jack Daniel’s appealed the decision, and the Supreme Court granted certiorari in November 2022.
As pointed out in the International Trademark Association’s amicus brief, co-authored by Leason Ellis partner Marty Schwimmer, “traditional expressive works” should be granted special treatment under the Rogers test because consumers perceive content differently when it is in the title or text of an expressive work rather than when it is in “trademark spaces.”
While the parties (and INTA) argue for various tweaks to the Rogers test, the Department of Justice, in its amicus brief, has argued that there is no statutory basis for the Rogers test at all and that any First Amendment considerations are already incorporated in the conventional likelihood of confusion test. As such, the DOJ contends that requiring a plaintiff to meet the requirements of the Rogers test prior to applying the statutorily prescribed likelihood of confusion standard is improper.
