# When a Joke Is Also a Brand: Jack Daniel's v. VIP Products and the Limits of Rogers

> The Supreme Court's 2023 ruling that the First Amendment Rogers test does not apply when a parody uses another's trademark as a source identifier for its own goods.

Topic: Trademarks  |  Author: Lidiia Levitska  |  Source: Intellectual Property Law (outsideipcounsel.com)
Canonical: https://outsideipcounsel.com/blog/jack-daniels-v-vip-products-rogers-source-identifying-use/


A squeaky dog toy shaped like a whiskey bottle gave the Supreme Court its most important trademark case in years. In *Jack Daniel's Properties, Inc. v. VIP Products LLC*, 599 U.S. 140 (2023) — decided June 8, 2023, in a unanimous opinion by Justice Elena Kagan — the Court held that the First Amendment-flavored *Rogers* test does not apply when an accused infringer uses another's trademark as a source identifier for its own goods. The ruling reined in an expanding doctrine that lower courts had used to wave away infringement claims against expressive products, and it returned humor-as-branding to the ordinary rules of trademark law.

## At a glance

- **Case:** *Jack Daniel's Properties, Inc. v. VIP Products LLC*, No. 22-148, 599 U.S. 140 (June 8, 2023).
- **Court:** Supreme Court of the United States; unanimous opinion by Justice Kagan, with concurrences by Justice Sotomayor (joined by Justice Alito) and Justice Gorsuch (joined by Justices Thomas and Barrett).
- **Posture:** Reversing the Ninth Circuit, which had applied *Rogers* to shield the dog toy and held the dilution claim barred by the noncommercial-use exclusion; vacated and remanded.
- **Holding:** The *Rogers* threshold test does not apply when a mark is used as a designation of source for the alleged infringer's own goods; the noncommercial-use exclusion to dilution does not shield such source-identifying use even when it parodies.
- **Significance:** Narrowed the reach of *Rogers v. Grimaldi* and confirmed that parody is evaluated within, not instead of, the likelihood-of-confusion analysis.

## "Bad Spaniels" and a famous bottle

VIP Products makes "Silly Squeakers," chewable dog toys that spoof well-known beverage brands. Its "Bad Spaniels" toy mimics the iconic Jack Daniel's bottle: the words "Jack Daniel's" become "Bad Spaniels," "Old No. 7 Brand Tennessee Sour Mash Whiskey" becomes "The Old No. 2 on Your Tennessee Carpet," and the alcohol-content line becomes a joke about its being "43% poo by vol." Jack Daniel's owns trademarks and trade dress in its distinctive bottle and label and demanded VIP stop. VIP sued for a declaration of non-infringement; Jack Daniel's counterclaimed for infringement and dilution by tarnishment.

The district court ruled for Jack Daniel's, but the Ninth Circuit reversed, holding the toy an "expressive work" entitled to the *Rogers* test — under which a trademark claim fails unless the defendant's use of the mark has no artistic relevance to the work or explicitly misleads about source. It also held the dilution claim barred because the parody was a "noncommercial use." The Supreme Court took the case and unanimously reversed.

## What Rogers is, and where it does not reach

*Rogers v. Grimaldi*, a 1989 Second Circuit decision, created a speech-protective filter for titles of expressive works — there, a film titled *Ginger and Fred*. It keeps trademark law from suppressing artistic expression that merely references a mark. Over the years, lower courts extended *Rogers* well beyond titles, applying it to a widening range of products said to be "expressive."

Justice Kagan's opinion drew a firm boundary. *Rogers*, she explained, has always been "a cabined doctrine," and it does not apply when the challenged use of a mark is as a mark — that is, as a designation of the source of the defendant's own goods. The whole point of trademark law is to prevent confusion about who makes a product, and that concern is "at its peak" when someone uses another's trademark as a trademark. Because VIP conceded it used "Bad Spaniels" and the associated trade dress to identify the source of its toy — even featuring "Bad Spaniels" on the packaging as a brand — the *Rogers* gateway never opened. The case returns to the ordinary, fact-intensive likelihood-of-confusion analysis.

## Parody belongs inside the confusion analysis

The Court was careful not to declare parody irrelevant. A parodic message can bear directly on whether consumers are actually confused: an effective parody signals that it is not the original and therefore not from the same source. But that inquiry happens within the standard multi-factor confusion test, not as an automatic, threshold escape hatch. As Justice Kagan put it, a trademark's humor "does not give the parodist a free pass." The expressive content is evidence about confusion, not a substitute for analyzing it.

On dilution, the Court rejected the Ninth Circuit's reasoning that the toy's parody made it a "noncommercial use" exempt from tarnishment liability. The Lanham Act's noncommercial-use exclusion, the Court held, does not shield every parody or commentary; it cannot be read to cover a use that functions as source identification for goods sold in commerce, because doing so would swallow the statute's separate, narrower exclusion for parody, criticism, and commentary not used as a designation of source. The dilution claim, too, returns for proper analysis.

## Open questions

- **Is *Rogers* valid at all?** The Court pointedly declined to endorse or reject *Rogers* generally, leaving its survival for non-source-identifying uses to future cases — a question the Gorsuch concurrence flagged for "lower courts to handle with care."
- **When is a use "source-identifying"?** The line between using a mark as a brand and merely referencing it expressively will be contested, especially for merchandise, art, and media that do both.
- **How much does parody move the confusion needle?** The Court folded parody into likelihood of confusion but gave little guidance on how heavily a successful joke weighs against a finding of confusion.

## Implications

- **Humor is not a shortcut.** Using a famous mark as the brand of your own product subjects you to ordinary infringement analysis, no matter how funny the takeoff.
- **The threshold question is source-identifying use.** Litigants must first ask whether the defendant used the mark as a mark; only then does the *Rogers* debate even arise.
- **Parody still matters — as evidence.** A clear parody can help show consumers were not confused, but it must be proven within the multi-factor test, not assumed.
- **Dilution defenses narrowed.** The noncommercial-use exclusion will not protect parodies that operate as source identifiers, restoring tarnishment claims that lower courts had foreclosed.
- **Product designers should plan for confusion analysis.** Companies building parody or homage products can no longer count on a quick *Rogers* dismissal and should assess genuine confusion risk up front.

## Frequently asked questions

**What did the Supreme Court hold in *Jack Daniel's v. VIP Products*?**
It held unanimously that the Rogers test does not apply when an alleged infringer uses another's trademark as a designation of source for its own goods. Because VIP used Bad Spaniels marks and trade dress to identify the source of its dog toy, the ordinary likelihood-of-confusion analysis applies, and the case was sent back for that analysis.

**Does this mean parody loses trademark protection?**
No. Parody can still matter, but as part of the standard likelihood-of-confusion inquiry rather than as an automatic First Amendment shield. The Court stressed that a parody that is also used as a source identifier does not escape the Lanham Act simply because it is funny or expressive.

**Did the Court decide whether the Rogers test is valid at all?**
No. The Court expressly declined to endorse or reject *Rogers v. Grimaldi* generally. It held only that Rogers does not apply to source-identifying use, leaving the broader status of the test for another day.

## Authorities and sources

- *Jack Daniel's Properties, Inc. v. VIP Products LLC*, 599 U.S. 140 (2023) (slip opinion, supremecourt.gov): https://www.supremecourt.gov/opinions/22pdf/22-148_3e04.pdf
- Justia case page (No. 22-148): https://supreme.justia.com/cases/federal/us/599/22-148/
- Oyez case file with argument audio: https://www.oyez.org/cases/2022/22-148
- SCOTUSblog argument analysis: https://www.scotusblog.com/2023/03/dog-toy-poking-fun-at-jack-daniels-leads-to-dispute-over-parody-exception-to-trademark-protections/