colorful terms : " 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 ."[ 12 ]
Justice Elena Kagan ' s opinion in Jack Daniel ' s limits the application of the Rogers test to evaluating only nontrademark uses of a brand , such as references in works of art where the name is used in a nonsource-identifying way .[ 13 ]
In contrast to a Warhol soup can or the use of a celebrity name in the title of a film , VIP Products used the Bad Spaniels mark not just on the expressive squeaky toy itself but on the label for the product . Hello , source identification .
Even if the name was an artistic dig at Jack Daniel ' s , because the Bad Spaniels name was a source identifier for the toy , the traditional likelihood-of-confusion test is the one that applies . There is no free pass just because the toy is cute and cuddly and funny .[ 14 ]
That is not to say , however , that the artistic expression of an allegedly infringing mark is unimportant or that there is not room for the First Amendment in the marketplace . That aspect still must be considered in a likelihood-of-confusion analysis .[ 15 ] "[ A ] trademark ' s expressive message ... may properly figure in assessing the likelihood of confusion ."
But that is where the court ' s direction in Jack Daniel ' s ends . How exactly one considers artistic expression — particularly parodic expression — is anyone ' s guess . And the analysis will be all the more complicated if and when the artistic expression wanders into a retail store .
Take , for example , the curious case of Lotso , the once love-filled " huggin " bear-turned-evil mastermind in Disney ' s " Toy Story 3 ." He may look cute , but after years of neglect , his heart grew cold , and he now runs a prison camp for toys as a ruthless dictator .
But that is not all . He has stepped outside the silver screen and into retail shelves where he waits for a child to take him home — really ? — with his trademarked name scrolled across the front along with Disney ' s logo as part of the " Toy Story Collection ."
The problem ? Another company owns his trademarked name , not Disney .
Before the Jack Daniel ' s decision , the Ninth Circuit applied the Rogers test and dismissed the trademark owner ' s infringement and unfair competition claims .[ 16 ] But in light of Jack Daniel ' s , the Supreme Court granted certiorari , vacated the judgment of the Ninth Circuit and remanded the case for reconsideration .
Lotso the movie character probably falls within the Rogers test , as did the fictional cabaret dancer who mimicked Ginger Rogers . But Lotso the toy bear on the shelf in the labeled box is more along the lines of the Bad Spaniels toy .
Does the toy get to enjoy the protection of the Rogers test , or must it endure a likelihood-of-confusion analysis ?
The Supreme Court has yet to provide that level of guidance . As Justice Neil Gorsuch notes in his concurring opinion — joined by Justices Thomas and Barrett — the court has left much about Rogers unaddressed .[ 17 ] He goes on to caution lower courts that Rogers may not be " correct in all its