[ and ] it does not , explicitly or otherwise , suggest that it was produced by Mattel ."[ 4 ] There are other examples of similar analyses .[ 5 ]
Perhaps due to the silence of the Rogers test until now , some lower courts — like the Ninth Circuit in Jack Daniel ' s — applied the test in a more expansive way . Indeed , below , the Ninth Circuit gave dog-toy maker VIP Products a pass on trademark infringement because the Bad Spaniels toy is an expressive work .[ 6 ]
The Supreme Court has now tightened the leash on lower courts : That a mark might be part of an expressive work — or indeed be an expressive work itself — is no longer a free pass from trademark infringement .
The question is not whether a mark ' s use is expressive in the First Amendment sense . Rather , courts should ask : Is a mark is used " to identify or brand [ a defendant ' s ] goods or services ?" And , if yes , is the use of that mark likely to confuse consumers ?[ 7 ]
For Bad Spaniels , the answer to both is probably a resounding yes .
By way of background , VIP sells squeaky dog toys called " Silly Squeakers " that look like the products of alcoholic beverage brands under names that parody those brands : " Dos Perros " instead of Dos Equis , " Smella Arpaw " instead of Stella Artois , among others .[ 8 ]
After VIP began selling the Bad Spaniels toy , Jack Daniel ' s sent VIP a cease-and-desist letter . VIP responded by filing a lawsuit , seeking a declaration that the Bad Spaniels name did not infringe or dilute the Jack Daniel ' s mark , and Jack Daniel ' s countersued for trademark infringement and dilution .[ 9 ]
On summary judgment , VIP argued that the First Amendment protected its use of expressive works such as the Bad Spaniels toy .
That is , VIP contended that the " Rogers test requires dismissal of an infringement claim at the outset unless the complainant can show one of two things : that the challenged use of a mark ' has no artistic relevance to the underlying work ' or that it ' explicitly misleads as to the source or the content of the work .'"[ 10 ]
The trial court disagreed and Jack Daniel ' s won its bench trial against VIP by showing that consumers were likely to be confused about the source of the Bad Spaniels toy . But the Ninth Circuit reversed , holding that the trial court erred by not applying the Rogers test , and on remand , the trial court reversed its judgment .[ 11 ]
The Supreme Court disagreed with the Ninth Circuit , 9 – 0 .
In what it calls a narrower path , the court ruled that the Rogers test is all bark and no bite where an allegedly infringing name is used as a source identifier . That is , the Rogers test has no merit and does not apply " when an alleged infringer uses a trademark in the way the Lanham Act most cares about : as a designation of source for the infringer ' s own goods ."
The First Amendment does not override the Lanham Act when the infringing mark is meant to — at least in part — help consumers decide to pick the infringing good versus another one in the market . In