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On June 8, 2023, the Supreme Court handed down a unanimous decision in the case of Jack Daniel’s Properties, Inc. v. VIP Products LLC. The ruling has significant implications for trademark law, particularly concerning the fair use and non-commercial use exceptions, which both permit certain otherwise-infringing uses of a registered mark if the use qualifies for first amendment protections as parody, criticism, or commentary. In this blog post, we will explore the key aspects of the decision and its potential implications for clients with registered trademarks.

The case centered around VIP Products LLC, a company that produced a dog toy imitating the well-known Jack Daniel’s whiskey bottle, imitating its trade dress including its unique shape, black label, white letters, and the filigree surrounding the label. Jack Daniels brought a trademark infringement lawsuit against VIP Products, alleging that the dog toy created a likelihood of consumer confusion. The question before the Supreme Court was whether the dog toy constituted protected fair use parody or expressive speech under the First Amendment, thus exempting it from trademark infringement claims.

Would-be trademark infringers historically relied on the test established by Rogers v. Grimaldi. This test requires that where expressive works are concerned, a registered trademark owner cannot present a likelihood of confusion argument until a showing has been made that the infringing use i) “has no artistic relevance to the underlying work,” or ii) that the use “explicitly misleads as to the source or the content of the work.” Similarly, the non-commercial use exclusion established in the Lanham Act, shields use of a registered mark deemed non-commercial by its nature as parody, criticism, or commentary.

Until now, these two doctrines have enabled the vast majority of parodic commercial use such as VIP Products’ dog toy, however, the Supreme Court in its opinion carved out a clear exception to their applicability where a registered trademark is being used by someone other than the trademark owner to identify that other party as the source of its own products.

That is to say, the Rogers Test can no longer be used as a defense in determining fair use and parody will no longer be treated as immediately non-commercial when the infringer is using a registered mark as a trademark (a source identifier affording brand benefits to the infringer) rather than solely as an expressive use.

The Supreme Court’s decision provides trademark owners with greater confidence in asserting their rights and defending against unauthorized uses of their trademarks. Clients with registered trademarks should be aware of the potential impact of this ruling on their enforcement strategies and consult with legal counsel to ensure their rights and interests are protected to the fullest possible extent.

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