Supreme Court Nixes First Amendment Defense To Trademark Infringement
The U.S. Supreme Court has practically nixed a longstanding and widely adopted First Amendment defense co trademark infringement that exempted certain unauthorized but “artistically expressive~ usages of trademarks from the reach of the Lanham Act. The specific issue decided in Jack Daniel’s, was application of the “Rogers test”, a decades old standard, which aimed to balance the focus of the trademark laws, i.e., avoiding consumer confusion, with the free expression concern of the First Amendment. In that case, the Supreme Court weighed in favor of trademark rights and held that the Rogers test does not apply to instances where the unauthorized. but “artistically expressive” trademark is used as a source identifier.
By way of background, a trademark is any feature or attribute of aproduct or service that can act as a source identifier. Typically a name or logo, atrademark can also be a scent, color, sound, the shape of a product or of its packaging, among others. The standard for determining trademark infringement is “likelihood of confusion,” i.e., whether the average consumer is likely to be confused by the allegedly infringing mark into believing that the product or service identified by the unauthorized mark is associated with the product or service identified by the original mark.
The “Rogers test” originated over three decades ago in the Second Circuit Court of Appeal. The case concerned amovie titled “Ginger and Fred,” a depiction of two fictional Italian cabaret performers, who imitated famed American performers Ginger Rogers and Fred Astaire and became known in Italy as “Ginger and Fred.” Unamused, Ginger Rogers sued the film makers and distributors, alleging that the title confused viewers into believing that the film was associated with or endorsed by her. The court disagreed and granted summary judgment in favor of the defendant. On appeal the Second Circuit court of appeal affirmed, and additionally devised atwo-part test, which became known as the “Rogers test” to determine works that would quality for exemption from the Lanham Act based on First Amendment concerns. Under the Rogers test, specifically developed for “misleading titles using acelebrity’s name,” an allegedly infringing mark in a title generally would qualify as an “artistic expression and thus exempt from the reach of the Lanham Act unless: (1) the title has no artistic relevance to the underlying work or, (2) the title explicitly misleads as to the source or the content of the work.
The next issue then, was how to define works thatwould qualify as an “artistic expression.” Rogers concerned an allegedly misleading and confusing movie title.
Shortly after Rogers, the Second Circuit Court of Appeal decided Cliffs Notes, which expanded the scope of the Rogers test beyond movie titles to include “any case where an expressive work is alleged to infringe a trademark.” In that case plaintiff. Cliffs Notes was the publisher of astudy guide for college students known as Cliffs Notes, whose content included condensed versions of various short stories, books, and plays. Defendant produced Spy Notes, a parody of Cliffs Notes, which copied prominent features of Cliffs Notes and used Cliffs Notes trademark on its cover. Cliffs Notes objected to this unauthorized use of its trademark and filed suit. In response, defendant argued that it was exempt from the Lanham Act under the Rogers test as an artistic expression. The district court granted preliminary injunction in favor of Cliffs Notes and rejected defendant’s position, which it characterized as a “a general First Amendment freedom to sue a registered trademark as part of a parody or satire.” On appeal, the Second Circuit reversed and ruled in favor of defendant. The decision expanded the Rogers test, to apply to “any case where an expressive work is alleged to infringe a trademark.” The panel then went on to find that Spy Notes, as a parody and satire of Cliffs Notes, did qualify as an artistic expression exempt from the reach of Lanham Act.
In time, other circuits followed and gaverecognition to satire and parody of a trademarkas qualifying artistic expression exempt fromthe reach of the Lanham Act. For example,in Tommy Hilfiger, a New York federal court,applying second circuit precedent, dismissedHilfiger’s claim of infringement on summaryjudgment, finding use of the name “TimmyHoledigger” for a brand of pet perfume “asan artistic expression and qualifying parody under the Rogers test. Likewise, in Louis Vuitton, the Fourth Circuit Court of Appeal held that the “Chewy Vuiton” dog toys were successful parodies of Louis Vuitton handbags, and the Louis Vuitton marks and trade dress used in connection with the marketing and sale of those handbags.
The next expansion of the Rogers test occurred in the Ninth Circuit decision Empire Distribution, which concerned an unauthorized use oftrademark that was substantially commercial in nature. Defendant Empire Distribution was a record label focused on urban music. Plaintiff Fox produced “Empire,” a television show that depicted a fictional music label named “Empire Enterprises” and promoted the show through musical events, radio, and consumer goods bearing the “Empire” brand. When Empire Distribution complained to Fox about Fox’s use of its trademark. Fox filed a declaratory action in federal court, seeking relief from the Lanham Act as a qualified “artistic expression” under the Rogerstest. Empire Distribution objected, noting Fox’s use of the “Empire” mark “as an umbrella brand to promote and sell music and other commercial products,” including appearances by cast members in other media, radio, plays, online advertising, live events, and the sale or licensing of consumer goods.”
The district court granted summary judgement in favor of Fox and rejected Empire Distribution’s contention that Fox’s unauthorized use of its trademark was primarily commercial and not qualifying as an exempt artistic expression under the Rogers test. The Ninth Circuit Court of Appeal affirmed. While the panel acknowledged that Fox’s use of the Empire brand fell outside the traditional application of the Rogers test for qualifying works, it expressed a willingness to adopt “only a minor logical extension of the reasoning of Rogers” to hold that Fox’s principally commercially focused use nonetheless qualified under the Rogers test. The appeal panel explained that the “Empire” title was expressive because “of the show’s setting in New York, the Empire State, and its subject matter is a music and entertainment conglomerate, ‘Empire Enterprises,’ which is itself a figurative empire.”
The gradual expansion of “qualifying works” under the Rogers test, from amovie title to the any expressive work and then to even including works which were predominantly directed to oven commercial usage. was subsequently criticized by commentators and courts as an exception that had grown solarge as to swallow the rule. For example, a Colorado federal court noted that “Rogers plus Twentieth Century Fox means that trademarks registered for arguably artisticproducts and services are not worth the paper that the trademark registration is printed upon. As long as a junior user makes no overt claim to association with the senior user, the junior user can market precisely the same artistic product or service under precisely the same mark. But why should this be permitted, even in the name of the First Amendment?This and other criticism of the ever-expandingscope of the Rogers test led the Supreme Courtto finally step in and grant review in the Jack Daniel’s case.
VIP, the defendant in the Jack Daniel’s case, was the maker of a dog toy with a label that mimicked the shape of Jack Daniel’s whiskey bottle with a satirical play on words and phrases appearing on Jack Daniel’s labels. For example, the words “Jack Daniel’s” become ” Bad Spaniels” on the VIP product. and “Old No. 7 Brand Tennessee Sour Mash Whiskey became “The Old No. 2 On Your Tennessee Carpet.” Jack Daniel’s was not amused, and, shortly after the introduction of Bad Spaniels into the market, contacted VIP and complained about Bad Spaniel’s parody use of its mark. VIP responded by filing a declaratory judgment lawsuit in federal court, seeking a determination that Bad Spaniel’s did not infringe Jack Daniel’s trademarks. VIP argued that its parody of Jack Daniel’s trademark was an artistic expression and thus exempt from the reach of the Lanham Act. The district court rejected that argument and ruled against VIP, reasoning that because VIP had used the parody of Jack Daniel’s mark as a source identifier, which precluded it from qualification under the Rogers test.
The Ninth Circuit court of appeal reversed, holding that VIP’s parody did qualify as an artistic expression and thus was exempted from the reach of the Lanham Aa, even though it was used as a source identifier. The appeal panel explained that consumers would not likely be confused by the Bad Spaniel’s marks because of the artistic play and obvious humor of the marks, which would alert consumers as to the distinction between the products identified by the respective marks. Jack Daniel’s appealed the Ninth Circuit decision to the U.S. Supreme Court, which granted certiorari and subsequently reversed the appeal court’s ruling.
The Supreme Court discarded the essence of the Rogers test chat that had exempted artistic expressions accused of trademark. Infringement from the reach of the Lanham Act, even if the expression at issue was used as a sourceidentifier and was substantially directed to commercial usage. The decision pointed out that VIP bad conceded that its use of Bad Spaniels was as a source identifier. The Court took special issue with the ever-expanding scope of Rogers to potentially encompass justabout everything because names, phrases, symbols, designs, and their varied combinations often “contain some ‘expressive’ message” unrelated to source. The unanimous decision elaborated that although an imitation “artistic expression” may well be relevant in assessing the likelihood of confusion between two marks, “few cases would even get to the likelihood-of-confusion inquiry if all expressive content triggered the Rogers filter. In that event, the Rogers exception would become the general rule, in conflict with well-established trademark law.”
In Jack Daniel’s, the Supreme Court effectively discarded the Rogers test as an affirmative defense to claims of trademark infringement and dilution, holding that there is no “artistic expression” exemption to the Lanham Act if the imitation mark is used at least in part as a source identifier. However, the Rogers test is still relevant to the extent it bears on the likelihood of confusion analysis.
A key threshold question for future cases defending an allegation of trademark infringement based on artistic expression is whether the accused mark is used as a source identifier. If the determination is affirmative, then the Rogers test would not apply. On the other hand, if the determination is negative, then the test could still apply unless the mark is expressively misleading. However, a concurring opinion signed by three of the justices cautioned courts about the viability of the Rogers test itself and urged judges to be cautious and careful in its application.