[co-author: Spencer Castilla]*
In a carefully viewed hallmark violation case, the Supreme Court of the United States held that when a supposed infringer utilizes a hallmark as a source identifier for the infringer’s own items, the First Amendment does not need a limit query like the Rogers test.
In a unanimous choice on June 8, 2023, the Supreme Court held that the First Amendment does not force a limit test when the “challenged usage of a mark is as a mark.” Jack Daniel’s Properties, Inc. v. VIP Prods. LLCNo. 22-148, 2023 WL 3872519 (U.S. June 8, 2023). Accordingly, the Court abandoned and remanded a Ninth Circuit choice holding that dog toys developed to appear like a bottle of Jack Daniel’s scotch did not infringe the hallmarks of Jack Daniel’s Properties, Inc. (“Jack Daniel’s”).
The case originates from the production of a novelty dog toy by VIP Products, LLC (“VIP”), which is aesthetically comparable to the style of a Jack Daniel’s Old No. 7 Black Label Tennessee Whiskey, changing Jack Daniel’s hallmarks such as “Jack Daniel’s” and “Old No. 7 Tennessee Sour Mash Whiskey” with “Bad Spaniels” and “Old No. 2 On Your Tennessee Carpet.” After getting a letter from Jack Daniel’s, VIP submitted a declaratory judgment action.
Jack Daniel’s dominated on its violation and dilution claims after a bench trial, with the district court finding that customers were most likely to be puzzled regarding the source of the Bad Spaniels toy. However, the Ninth Circuit reversed, identifying that the dog toy was “a meaningful work” that was secured by the First Amendment and based on the limit Rogers test. Under this test, a work is secured under the First Amendment if it is: (i) creatively pertinent; and (ii) not clearly deceptive. Rogers v. Grimaldi875 F. 2d 994 (second Cir. 1989). On remand, the district court discovered that neither prong of Rogers was pleased and given summary judgment to VIP.
In the “narrow” viewpoint composed by Justice Elena Kagan, the Court held that the Rogers test “is not proper” when the implicated infringer utilizes a mark as a source identifier since such “usage falls within the heartland of hallmark law, and does not receive unique First Amendment security.” Accordingly, the Court abandoned and remanded this choice, particularly keeping in mind that it does so without choosing whether Rogers has benefits in other contexts. (Three justices in a concurring viewpoint, nevertheless, prompted lower courts to “deal with” Rogers “with care.”)
On a 2nd problem, whether parody is a “noncommercial usage” that is constantly exempt from hallmark dilution, the Court once again concentrated on whether the mark was utilized as a source indication, holding that the noncommercial exemption does not protect parodies that have source-identifying functions.
The Supreme Court’s choice is welcome news for brand name owners imposing versus meaningful works, as the Court explained that when an implicated infringer “has actually utilized a hallmark as a hallmark,” it does not receive First Amendment security and is not immediately left out from dilution liability.
*Summer Associate
