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Questions Remain After SCOTUS Trademark Decision

June 08, 2023


Prof. Jennifer E. Rothman discusses the Supreme Court’s narrow ruling in the Jack Daniel’s case and its implications for both that case and trademark law generally.

Jennifer E. Rothman, Nicholas F. Gallicchio Professor of Law, shared her insight on the Supreme Court decision in favor of Jack Daniel’s in a trademark dispute over a dog toy.

Rothman, who holds a secondary appointment at the University of Pennsylvania’s Annenberg School for Communication, is nationally recognized for her scholarship in the field of intellectual property law. She is the leading expert on the right of publicity and is frequently sought after to consult on legislation, high-profile litigation, and the development of creative projects.

From Rothman’s Roadmap to the Right of Publicity:

Today’s Supreme Court decision in Jack Daniel’s Properties, Inc. v. VIP Products, 599 U.S. __ (2023), will influence not only trademark cases to come, but also false endorsement and right of publicity cases.

Jennifer E. Rothman, Nicholas F. Gallicchio Professor of Law Jennifer E. Rothman, Nicholas F. Gallicchio Professor of LawAs you may already know, the case involved a dog toy that mocked the name and trade dress of Jack Daniel’s iconic whiskey bottle. The Ninth Circuit applied what is known as the Rogers test to hold that the use of Jack Daniel’s name and trade dress was expressive, the use artistically relevant, and “not explicitly misleading as to source or content.” Accordingly, the appellate court rejected both infringement and dilution claims against VIP Products, the dog toy company.

The Supreme Court reversed and remanded the case, holding that the Rogers test was not applicable to the sort of use made of the Jack Daniel’s trade dress and mark because the defendant VIP Products used them as marks for its own product. Thus, the Court limited the applicability of the Rogers test to uses that are not as a mark. The Court emphasized that its holding was “narrow” and that it did not decide the question of “whether Rogers has merit in other contexts.” It solely held “that [Rogers does not have merit] 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.” Slip Op. at 10.

The decision was far more modest decision than predicted. It did not broadly strike down Rogers. It did not get into the thorny area of what counts as artistic expression or an expressive work. The Court left in place (without deciding) the Rogers test but limited its applicability to instances in which a defendant does not use the plaintiff’s mark as a mark for its own products or services. The Court was wise to make such a narrow ruling, one that will likely lead the creative industries, particularly the film industry, to breathe a sigh of relief.

Many questions, however, are left on the table both generally for trademark law and specifically for this case on remand… . 

Read the full post at Rothman’s Roadmap to the Right of Publicity.