Jack Daniel's V VIP Products
Jack Daniel's V VIP Products
Jack Daniel's V VIP Products
Syllabus
Syllabus
Syllabus
Syllabus
Syllabus
that carve-out, parody is exempt from liability only if not used to des-
ignate source. The Ninth Circuit’s expansive view of the noncommer-
cial use exclusion—that parody is always exempt, regardless whether
it designates source—effectively nullifies Congress’s express limit on
the fair-use exclusion for parody. Pp. 19–20.
953 F. 3d 1170, vacated and remanded.
No. 22–148
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1 To be clear, when we refer to “the Rogers threshold test,” we mean
When, instead, the use is “at least in part” for “source iden-
tification”—when the defendant may be “trading on the
good will of the trademark owner to market its own
goods”—Rogers has no proper role. 221 F. Supp. 2d, at 414–
415. And that is so, the court continued, even if the defend-
ant is also “making an expressive comment,” including a
parody of a different product. Id., at 415. The defendant is
still “mak[ing] trademark use of another’s mark,” and must
meet an infringement claim on the usual battleground of
“likelihood of confusion.” Id., at 416.
That conclusion fits trademark law, and reflects its pri-
mary mission. From its definition of “trademark” onward,
the Lanham Act views marks as source identifiers—as
things that function to “indicate the source” of goods, and
so to “distinguish” them from ones “manufactured or sold
by others.” §1127; see supra, at 2–3. The cardinal sin under
the law, as described earlier, is to undermine that function.
See supra, at 3. It is to confuse consumers about source—
to make (some of ) them think that one producer’s products
are another’s. And that kind of confusion is most likely to
arise when someone uses another’s trademark as a trade-
mark—meaning, again, as a source identifier—rather than
for some other expressive function. To adapt one of the
cases noted above: Suppose a filmmaker uses a Louis Vuit-
ton suitcase to convey something about a character (he is
the kind of person who wants to be seen with the product
but doesn’t know how to pronounce its name). See supra,
at 12. Now think about a different scenario: A luggage man-
ufacturer uses an ever-so-slightly modified LV logo to make
inroads in the suitcase market. The greater likelihood of
confusion inheres in the latter use, because it is the one con-
veying information (or misinformation) about who is re-
sponsible for a product. That kind of use “implicate[s] the
core concerns of trademark law” and creates “the paradig-
matic infringement case.” G. Dinwoodie & M. Janis, Con-
fusion Over Use: Contextualism in Trademark Law, 92
Cite as: 599 U. S. ____ (2023) 15
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2 That is not to say (far from it) that every infringement case involving
Or take a band name that “not only identifies the band but
expresses a view about social issues.” Tam, 582 U. S., at
245 (opinion of ALITO, J.) (discussing “The Slants”). Or note
how a mark can both function as a mark and have parodic
content—as the court found in the Hilfiger/Holedigger liti-
gation. See supra, at 13–14. The examples could go on and
on. As a leading treatise puts the point, the Ninth Circuit’s
expansion of Rogers “potentially encompasses just about
everything” because names, phrases, symbols, designs, and
their varied combinations often “contain some ‘expressive’
message” unrelated to source. 6 McCarthy §31:144.50.
That message may well be relevant in assessing the likeli-
hood of confusion between two marks, as we address below.
See infra, at 18–19. But few cases would even get to the
likelihood-of-confusion inquiry if all expressive content trig-
gered the Rogers filter. In that event, the Rogers exception
would become the general rule, in conflict with courts’
longstanding view of trademark law.
The Ninth Circuit was mistaken to believe that the First
Amendment demanded such a result. The court thought
that trademark law would otherwise “fail[ ] to account for
the full weight of the public’s interest in free expression.”
953 F. 3d, at 1174. But as the Mattel (i.e., Barbie) court
noted, when a challenged trademark use functions as
“source-identifying,” trademark rights “play well with the
First Amendment”: “Whatever first amendment rights you
may have in calling the brew you make in your bathtub
‘Pepsi’ ” are “outweighed by the buyer’s interest in not being
fooled into buying it.” 296 F. 3d, at 900. Or in less colorful
terms: “[T]o the extent a trademark is confusing” as to a
product’s source “the law can protect consumers and trade-
mark owners.” Tam, 582 U. S., at 252 (Kennedy, J., concur-
ring in part and concurring in judgment); see Friedman v.
Rogers, 440 U. S. 1, 15 (1979) (rejecting a First Amendment
challenge to a law restricting trade names because of the
“substantial” interest in “protecting the public from [their]
Cite as: 599 U. S. ____ (2023) 17
in dog toys like “Jose Perro” (cf. Jose Cuervo) and “Hein-
ieSniff ’n” (cf. Heineken).3 And it has chosen to register the
names of still other dog toys, including Dos Perros
(#6176781), Smella Arpaw (#6262975), and Doggie Walker
(#6213816). See supra, at 6. Put all that together, and
more than “form” or “rote” emerges: VIP’s conduct is its own
admission that it is using the Bad Spaniels (née Jack Dan-
iel’s) trademarks as trademarks, to identify product source.
Because that is so, the only question in this suit going
forward is whether the Bad Spaniels marks are likely to
cause confusion. There is no threshold test working to kick
out all cases involving “expressive works.” But a trade-
mark’s expressive message—particularly a parodic one, as
VIP asserts—may properly figure in assessing the likeli-
hood of confusion. See, e.g., Louis Vuitton Malletier S. A. v.
Haute Diggity Dog, LLC, 507 F. 3d 252, 265 (CA4 2007)
(Parody “influences the way in which the [likelihood-of-con-
fusion] factors are applied”); Brief for United States as Ami-
cus Curiae 17–22 (same). A parody must “conjure up”
“enough of [an] original to make the object of its critical wit
recognizable.” Campbell v. Acuff-Rose Music, Inc., 510
U. S. 569, 588 (1994) (internal quotation marks omitted).
Yet to succeed, the parody must also create contrasts, so
that its message of ridicule or pointed humor comes clear.
And once that is done (if that is done), a parody is not often
likely to create confusion. Self-deprecation is one thing;
self-mockery far less ordinary. So although VIP’s effort to
ridicule Jack Daniel’s does not justify use of the Rogers test,
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3 See, e.g., VIP Products, LLC v. Tequila Cuervo La Rojena, S. A. de
C. V., No. 20–cv–0319 (D Ariz., Feb. 11, 2020), ECF Doc. 1, p. 3 (“Jose
Perro”); VIP Products, LLC v. Heineken USA, Inc., No. 13–cv–0319 (D
Ariz., Feb. 13, 2013), ECF Doc. 1, pp. 3–4 (“HeinieSniff ’n”); VIP Products,
LLC v. Pabst Brewing Co., No. 14–cv–2084 (D Ariz., Sept. 19, 2014), ECF
Doc. 1, pp. 3–4 (“Blue Cats Trippin”) (cf. Pabst Blue Ribbon); VIP Prod-
ucts, LLC v. Champagne Louis Roederer, S. A., No. 13–cv–2365 (D Ariz.,
Nov. 18, 2013), ECF Doc. 1, pp. 3–4 (“Crispaw”) (cf. Cristal).
Cite as: 599 U. S. ____ (2023) 19
No. 22–148
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dog toy company that made this toy had to get [Jack Dan-
iel’s] permission and legal rights to essentially copy the[ir]
product in dog toy form’ ”); ibid. (“ ‘The bottle is mimicked
after the Jack Daniel BBQ sauce. So they would hold the
patent therefore you would have to ask permission to use
the image’ ”); see also Anheuser-Busch, Inc. v. Balducci Pub-
lications, 28 F. 3d 769, 772–773, 775 (CA8 1994) (describing
a similar situation). Plaintiffs can point to this misunder-
standing of the legal framework as evidence of consumer
confusion. Cleverly designed surveys could also prompt
such confusion by making consumers think about complex
legal questions around permission that would not have
arisen organically out in the world.
Allowing such survey results to drive the infringement
analysis would risk silencing a great many parodies, even
ones that by other metrics are unlikely to result in the con-
fusion about sourcing that is the core concern of the Lan-
ham Act. See ante, at 4, 10, 14. Well-heeled brands with
the resources to commission surveys would be handed an
effective veto over mockery. After all, “[n]o one likes to be
the butt of a joke, not even a trademark.” 6 J. McCarthy,
Trademarks and Unfair Competition §31:153 (5th ed.
2023). This would upset the Lanham Act’s careful balanc-
ing of “the needs of merchants for identification as the pro-
vider of goods with the needs of society for free communica-
tion and discussion.” P. Leval, Trademark: Champion of
Free Speech, 27 Colum. J. L. & Arts 187, 210 (2004). Courts
should thus ensure surveys do not completely displace other
likelihood-of-confusion factors, which may more accurately
track the experiences of actual consumers in the market-
place. Courts should also be attentive to ways in which sur-
veys may artificially prompt such confusion about the law
or fail to sufficiently control for it.
Cite as: 599 U. S. ____ (2023) 1
No. 22–148
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