In a highly anticipated decision, the Supreme Court ruled on June 8, 2023 in favor of Jack Daniel's inJack Daniel's Properties,Inc. v. VIP Products LLC, a dispute over the use of its name, packaging, and wording from its well-known bottle label by a dog toy manufacturer.VIP Products, the dog toy manufacturer, claimed its uses of Jack Daniel's trademarks were a parody, relying on a long-established Second Circuit case,Rogers v. Grimaldi, that immunized use of another's trademark in "expressive works" except in clearly defined circumstances. To overcome this limited type of immunity and move forward with a trademark infringement case, a trademark owner was required to prove the case fell within one of the exceptions to theRogers v. Grimaldiimmunity.
The Supreme Court has now clarified that the doctrine of Rogers v. Grimaldi does not apply if the trademark has been used at least in part to identify the source of the alleged infringer's goods or services. As a result, the Supreme Courthas ruled that referencing another's trademark in advertising or in the content of a product or service is not as well-protected as courts around the country previously assumed. References to another's mark are not immunized simply because they parody the mark. Any use of another's trademark that can be perceived as identifying the trademark owner as the source of the goods or services may now subject the user to a trademark infringement lawsuit. Owners of established brands have good reason to be pleased with this development in the law. Although the Rogers v. Grimaldi "immunity" for expressive works persists, it will be harder to establish in light of the Supreme Court's ruling.
Moses Singer routinely advises brand owners, marketing and advertising agencies, and producers of audiovisual and written content about clearance issues including use of others trademarks. Such clearance issues frequently involve analyzing fair use of trademarks, copyrights, and individuals' rights of publicity. Any existing uses of a third-party's trademarks in products or advertising bears reconsideration in light of this ruling.
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