Jack Daniel's Properties, Inc. v. VIP Products LLC
The Supreme Court unanimously ruled that a dog toy maker cannot use First Amendment parody arguments to dodge a trademark lawsuit from Jack Daniel's, holding that when a company uses another brand's look as its own product identifier, the standard consumer-confusion analysis must proceed.
The decision also closes a loophole that lower courts had used to shield parodic products from dilution liability, clarifying that parody does not automatically make a commercial use 'noncommercial' under trademark law.
How it got here: A federal trial court sided with Jack Daniel's after a bench trial; the Ninth Circuit reversed, applying a First Amendment threshold test and the noncommercial-use exclusion; on remand the district court again ruled for VIP; the Supreme Court agreed to review both issues.
The Case in Depth
What happened
VIP Products makes a line of squeaky rubber dog toys parodying popular drink brands. Its "Bad Spaniels" toy was shaped and labeled to closely mimic a Jack Daniel's whiskey bottle, swapping the famous label text for scatological puns — "The Old No. 2 On Your Tennessee Carpet" in place of "Old No. 7 Tennessee Sour Mash Whiskey." Jack Daniel's sued, arguing the toy confused consumers about the whiskey maker's involvement and harmed its brand by linking it to dog excrement.
The question before the Court
Does the First Amendment require courts to apply a special threshold test — and potentially skip the standard consumer-confusion analysis — when a trademark lawsuit targets a product that parodies a famous brand?
The Court's answer
No — the First Amendment does not require courts to apply a special threshold test (called the Rogers test) that could knock out a trademark infringement claim before asking whether consumers were actually confused, when the alleged infringer is using the mark as its own brand identifier. The whole point of trademark law is to prevent confusion about who made a product, and that concern is sharpest when someone uses a competitor's mark as if it were their own. VIP did exactly that — its own complaint claimed ownership of the Bad Spaniels trademark — so the case goes back to the lower courts to run the standard likelihood-of-confusion analysis. VIP's parodic intent can still matter in that analysis (a mocked brand is less likely to be seen as endorsing the mockery), but it does not trigger a threshold escape hatch.
On the dilution claim, the Court also ruled against VIP. The trademark law lets parodists avoid dilution liability under a "fair use" carve-out, but only when they are not using the mark as their own source identifier — and VIP was. The Ninth Circuit's alternative theory, that parody is always "noncommercial use" exempt from dilution, would nullify Congress's express limit, so the Court rejected it.
Curious how the Court got there? See the step-by-step legal reasoning →
Why it matters
Companies that sell products designed to look like — and poke fun at — famous brands can no longer claim an automatic First Amendment off-ramp from trademark suits. They must show consumers are unlikely to be confused about who actually made the product. This affects makers of parody merchandise, novelty goods, and any business that deliberately echoes a famous brand's look to attract attention.
What changes now
The case returns to the lower courts to conduct the standard likelihood-of-confusion analysis on the infringement claim, with the instruction that VIP's parodic intent can be considered as a factor in that assessment — even if it doesn't trigger a special threshold test. The dilution claim similarly goes back for analysis consistent with the Court's statutory reading. The broader question of whether the Rogers test is ever valid, and in what circumstances, remains unresolved and open for future cases.
What this does not decide
The Court explicitly does not decide whether the Rogers threshold test is ever appropriate in any context, leaving open its validity for cases where a trademark is used in a purely expressive way without functioning as a source identifier. The scope of the "noncommercial use" exclusion from dilution liability beyond the parody context is also left open.
Concurrences and dissents
Concurrence — Justice Sotomayor
Justice Sotomayor, joined by Justice Alito, wrote separately to warn courts to treat survey evidence with particular caution in parody trademark cases. Survey respondents may mistakenly believe all parodies require permission from the trademark owner, and cleverly designed surveys could artificially prompt that confusion. Giving such surveys undue weight could effectively hand large corporations a veto over mockery by allowing manufactured confusion data to drown out other likelihood-of-confusion factors that more accurately reflect real consumers' experiences.
Concurrence — Justice Gorsuch
Justice Gorsuch, joined by Justices Thomas and Barrett, wrote separately to flag that today's decision leaves much about the Rogers test unresolved — including whether it is required by the First Amendment or is merely a court-made gloss on the Lanham Act, and whether it is correct in all its particulars. The Solicitor General raised serious questions about Rogers' foundations. Lower courts should be alert to these open questions and handle Rogers with care until the Court has a chance to address them directly.
How the Court got there
The legal reasoning, step by step
- The Rogers test — named for a 1989 Second Circuit decision (Rogers v. Grimaldi) — was created as a First Amendment shield for 'expressive works.' Under Rogers, when a trademark appears in an artistic or expressive context, a court skips the standard consumer-confusion question and dismisses the lawsuit at the outset unless the trademark has no artistic relevance, or explicitly misleads about the source of the work. The question here was whether that threshold filter applied to the Bad Spaniels toy.
- Every court that has adopted Rogers has confined it to situations where the trademark is used purely for expression — a band name in a song lyric, a branded suitcase in a movie scene — and not to identify who made the defendant's product. When a defendant uses another company's mark as its own brand identifier (a 'trademark use'), those same courts consistently run the standard likelihood-of-confusion test without invoking Rogers at all. The Court found this pattern reflects the correct reading of Rogers even on its own terms.
- The reason Rogers stops at trademark uses is rooted in trademark law's core mission: preventing consumer confusion about who made a product. That kind of confusion is most likely when a defendant's mark functions as a source identifier, and least likely when it is purely decorative or artistic. So when a mark is used as a mark, the likelihood-of-confusion inquiry does all the work needed to protect free expression interests — a separate First Amendment filter is unnecessary and would convert a narrow exception into the general rule.
- VIP's own legal filings established that it used Bad Spaniels as a source identifier: its complaint claimed ownership and use of the 'Bad Spaniels' trademark and trade dress, it displayed the Bad Spaniels logo alongside its registered Silly Squeakers brand logo on product hangtags, and it consistently claimed unregistered trademark rights in other parody dog toys in the same product line. These admissions meant Rogers never applied, and the infringement claim proceeds to the standard analysis on remand.
- On dilution, the Lanham Act's 'fair use' exclusion specifically covers parody of famous marks — but expressly carves out that protection when the parody is used 'as a designation of source for the person's own goods.' The Ninth Circuit instead applied the broader 'noncommercial use' exclusion to shield VIP, reasoning that any parody is noncommercial. The Court held this reading effectively nullifies the express statutory limit Congress placed on the parody fair-use carve-out: if parody always qualifies as noncommercial, the source-identifier carve-out in the fair-use exclusion would be a dead letter.
- The Court explicitly limited the reach of both holdings: it took no position on whether the Rogers test is ever valid in other contexts, and it left open the full scope of the 'noncommercial use' exclusion. Both holdings turn on the same pivot — whether the challenged use functions as a source identifier — because that fact is what the Lanham Act treats as most significant.
Doctrinal impact
Cases affected by this decision
Limits Rogers v. Grimaldi (875 F. 2d 994)
The Rogers First Amendment threshold test does not apply when a trademark is used as a source identifier for the defendant's own goods.