particulars ."[ 18 ]
Given that the Ninth Circuit has been on the side of broadening Rogers over the past several decades , one should not expect that court to suddenly do away with the test altogether . But it will have to articulate a line between permitted expressive use of mark in a movie , a core Rogers use , and prohibited use of a mark to designate source — a core trademark use .
Perhaps it is fitting that an evil bear may be that catalyst for clarifying the intersection of the First Amendment and trademark rights . The devil , of course , is in the details .
Jonathon Hance and Drew Taggart are partners , and William Mahoney is an associate , at Bracewell LLP .
The opinions expressed are those of the author ( s ) and do not necessarily reflect the views of their employer , its clients , or Portfolio Media Inc ., or any of its or their respective affiliates . This article is for general information purposes and is not intended to be and should not be taken as legal advice .
[ 1 ] Jack Daniel ' s Properties , Inc . v . VIP Products LLC , No . 22-148 , 599 U . S . ____, ___ S . Ct . ____, ___ L . Ed . 2d ____, 2023 WL 3872519 ( June 8 , 2023 ). Click here to read the opinion .
[ 2 ] See Rogers v . Grimaldi , 875 F . 2d 994 ( 2d Cir . 1989 ). The Rogers test has since been adopted by the Third , Fifth , Sixth , Ninth , and Eleventh Circuits as well as by district courts in the Seventh and Tenth Circuits . See Lynn M . Jordan and David M . Kelly , Another Decade of Rogers v . Grimaldi : Continuing to Balance the Lanham Act with the First Amendment Rights of Creators of Artistic Works , 109 T . M . R . 833 , 834 – 35 ( 2019 ).
[ 3 ] Id . at 998 . [ 4 ] Mattel , Inc . v . MCA Records , Inc ., 296 F . 3d 894 , 901 ( 2002 )
[ 5 ] See , e . g ., University of Ala . Bd . of Trustees v . New Life Art , Inc ., 683 F . 3d 1266 , 1279 ( 2012 ) ( dismissing trademark suit against an artist who depicted the University of Alabama ' s trademarked football uniforms because the art memorialized an event in " football history "); Louis Vuitton Malletier S . A . v . Warner Bros . Entertainment Inc ., 868 F . Supp . 2d 172 ( S . D . N . Y . 2012 ) ( determining that The Hangover : Part II ' s use of the Louis Vuitton brand by a character was not trademark infringement where the film ' s character was not using the brand as a source identifier ).
[ 6 ] VIP Products LLC v . Jack Daniel ' s Properties , Inc ., 953 F . 3d 1170 , 1175 ( 9th Cir . 2020 ) ("[ T ] he Bad Spaniels dog toy , although surely not the equivalent of the Mona Lisa , is an expressive work .").
[ 7 ] Jack Daniel ' s , 2023 WL 3872519 , at * 6 [ 8 ] Id . at * 5 . [ 9 ] Id . [ 10 ] Id . at * 6 ( citing Rogers , 875 F . 2d at 999 ) [ 11 ] Id .