Brands — and the names, slogans, and logos they use to promote themselves — are “ubiquitous, embedded in every aspect of our lives and relationships.”1 Given their omnipresence, it is no surprise that others use their trademarks for “lighthearted humor, critical cultural commentary, parody, or even simply to shock.”2 Nevertheless, over the last few decades, trademark owners’ rights have expanded significantly,3 giving owners an increasing ability to suppress speech they do not like.4 In Jack Daniel’s Properties, Inc. v. VIP Products LLC,5 the Supreme Court added to this trend by misconstruing the proper scope of the statutory exclusion from dilution liability for noncommercial uses of a mark.
A trademark is a brand name, logo, “trade dress” (that is, a product’s packaging or general appearance), or anything else that indicates a product’s source (i.e., that a given product comes from a given producer).6 The Lanham Act,7 the federal trademark statute, creates causes of action for trademark infringement and trademark dilution. Infringement entails using in commerce “any reproduction, counterfeit, copy, or colorable imitation of a registered mark” or any “word, term, name, symbol, or device, or any combination thereof” in a manner that is “likely to cause confusion, or to cause mistake, or to deceive.”8 Dilution entails using a famous mark in commerce in a way that is likely to impair its distinctiveness by associating it with unrelated products (“blurring”) or to harm its reputation by associating it with low-quality or unsavory products (“tarnishment”).9 Each cause of action has defenses. In infringement cases, courts apply a First Amendment defense the Second Circuit developed in Rogers v. Grimaldi.10 Under the Rogers test, the Lanham Act does not apply to uses of trademarks in expressive works unless a given use either has no relevance to the underlying work or is explicitly misleading.11 As to dilution, the Lanham Act excludes certain uses from liability, including non-source-indicating fair uses (such as parody or criticism) as well as “[a]ny noncommercial use.”12
To give examples of all the above: The name “Coca-Cola,” the Coca-Cola logo and script, and the distinctive shape of a Coke bottle (part of its trade dress) could all be marks, as all indicate that the soda is made by Coca-Cola and not by, say, PepsiCo. If another company sold soda in bottles similar to Coca-Cola’s, causing purchasers to think they were buying Coke, that company could be liable for infringement. But if a movie character drank a Diet Coke onscreen, that depiction would be protected by Rogers. And if another company used Coca-Cola’s font to advertise even unrelated products, it could be liable for dilution by blurring (even if no consumer were confused);13 if that company used Coca-Cola’s font to advertise porn, it could be liable for dilution by tarnishment. But if its use were noncommercial or were a non-source-indicating parody, it would be excluded from liability.
Enter VIP Products LLC. VIP sells dog toys, including “Silly Squeakers,” which look like popular drinks but have labels with “dog-related twists.”14 In 2014, VIP introduced the “Bad Spaniels” toy, a Silly Squeaker designed to look like a bottle of Jack Daniel’s with puns about dog excrement replacing information about whiskey: “The Old No. 2 On Your Tennessee Carpet” instead of “Old No. 7 [Brand] Tennessee Sour Mash Whiskey,” and “43% poo by vol.” and “100% smelly” instead of “40% alc. by vol. (80 proof).”15
Unamused, Jack Daniel’s Properties, Inc. (JDPI),16 insisted that VIP stop selling the toy.17 VIP declined and filed suit in the U.S. District Court for the District of Arizona, seeking a declaratory judgment that the Bad Spaniels toy did not infringe or dilute any trademark rights claimed by JDPI.18 VIP also sought a declaration that the Jack Daniel’s trade dress was not entitled to trademark protection, as well as cancellation of JDPI’s Patent and Trademark Office registration for the Jack Daniel’s bottle design.19 JDPI brought counterclaims for trademark infringement and trademark dilution, seeking an injunction.20
VIP moved for summary judgment and JDPI for partial summary judgment.21 The district court denied VIP’s motion, holding that the Bad Spaniels toy was not protected either as nominative fair use, because VIP did not actually use Jack Daniel’s marks; or by the First Amendment, because the dog toy was not an expressive work.22 The court further held that there was a disputed issue of fact as to whether VIP’s use was likely to cause confusion.23 The court also denied VIP’s motion for summary judgment on JDPI’s dilution counterclaim.24 It held that VIP could not avail itself of the Lanham Act’s parody defense because that defense does not apply when a defendant uses a mark to designate the source of its own products, as VIP had.25 And there were disputed issues of fact as to whether the products were sufficiently similar for dilution and as to whether the Bad Spaniels toy tarnished JDPI’s marks.26 As to JDPI’s motion, the court held that the Jack Daniel’s trade dress was protectable (because it was distinctive and not functional) and declined to invalidate JDPI’s registration for the shape of the Jack Daniel’s bottle.27 After a bench trial, the court found that VIP had tarnished and infringed JDPI’s trademarks and trade dress, and enjoined VIP from selling or otherwise promoting the Bad Spaniels toy.28
The Ninth Circuit affirmed in part, reversed in part, vacated in part, and remanded.29 Writing for the panel, Judge Hurwitz30 affirmed the district court’s holdings that JDPI’s marks were distinctive and nonfunctional and thus protectable; that VIP’s use did not constitute nominative fair use; and that JDPI’s registration was valid.31 The court reversed, however, on dilution, holding that, because VIP’s use of JDPI’s trade dress and bottle design “convey[ed] a humorous message,” it did “more than propose a commercial transaction.”32 It was thus noncommercial speech, which is nondilutive under section 43(c) of the Lanham Act.33 The court also vacated the district court’s finding of infringement, reasoning that the Bad Spaniels product, despite being a dog toy, was an expressive work.34 The court thus remanded the case for a determination as to whether Bad Spaniels passed Rogers.35
On remand, VIP moved for summary judgment on the grounds that JDPI could not prove that Bad Spaniels failed either Rogers prong.36 The district court granted the motion, reasoning that VIP’s use of JDPI’s marks was relevant in that the toy “play[ed] upon” those marks “to communicate a message” and did not explicitly mislead because expressive content was added and the toy’s label contained a disclaimer.37 The Ninth Circuit summarily affirmed.38
The Supreme Court vacated and remanded, with Justice Kagan writing for a unanimous Court.39 She began by noting that a trademark’s “‘primary’ function” is to “identify the origin or ownership of the article to which it is affixed,” thereby allowing consumers to purchase goods they know they like (or avoid goods they know they do not) and incentivizing businesses to produce high-quality goods by ensuring that the positive reputations of such goods will redound to their benefit.40
The Court stated that, when it comes to preventing confusion that could arise from source-indicating uses, “trademark rights ‘play well with the First Amendment.’”41 Thus, when an alleged infringer uses a trademark “as a mark” — that is, as an indication of source for its own products — no “threshold First Amendment filter” (like Rogers) applies.42 Where a defendant uses a mark to indicate source, the fact that the use is a parody may make confusion less likely, and so is relevant to whether the defendant infringed.43 But this is the only First Amendment protection that source-indicating parodic uses receive.44 Thus, because VIP used JDPI’s marks (including name and trade dress) as indicators of source for the Bad Spaniels toy, the “only question” left to resolve was whether VIP’s uses are likely to cause confusion — though the fact that it crudely mocked Jack Daniel’s can make that less likely.45
The Court then turned to dilution, which issue it “easily dispatched.”46 That VIP’s use conveyed a nonadvertising message was insufficient for it to fit within the noncommercial use exclusion.47 Rather, because the Lanham Act’s separate parody exclusion applies only to parodies that do not make source-indicating use of a mark, to extend the noncommercial use exception to parodies that do would “negate[] Congress’s judgment about when — and when not — parody” is protected.48 Thus, the Court held that the “noncommercial exclusion does not shield parody or other commentary when its use of a mark is similarly source-identifying.”49
Justice Sotomayor concurred to observe that, in the context of parodies and (potentially) other expressive works, courts must cast a gimlet eye on surveys purporting to show consumer confusion.50 Survey responses “may reflect a mistaken belief” that “all parodies require permission from the owner of the parodied mark,” and they can be “[c]leverly designed” so as to prompt confusion.51 Therefore, if surveys are allowed to “drive the infringement analysis,” trademark owners would effectively be granted a veto over mockery.52
Justice Gorsuch also concurred to emphasize his skepticism regarding Rogers.53 He observed that “it is not entirely clear where the Rogers test comes from” and that “it is not obvious that Rogers is correct in all its particulars.”54 Thus, he noted that lower courts should “handle [it] with care” pending its “resolution another day.”55
In Jack Daniel’s, the Court unnecessarily narrowed the Lanham Act’s exclusion from dilution liability for noncommercial uses, holding that this exclusion applies only to non-source-indicating commentary. This holding will likely weaken First Amendment defenses necessary to protect expression from expanding trademark rights.
The Jack Daniel’s dilution holding rests on a misreading of section 43(c) of the Lanham Act. That portion of the opinion started by recalling that section 43(c)(3)(A)’s fair use exclusion for parody, criticism, and commentary is expressly limited to uses that do not use the plaintiff’s trademark as a designation of source.56 Thus, “parody (and criticism and commentary, humorous or otherwise) is exempt from liability only if not used to designate source.”57
Regarding the fair use exclusion, which explicitly includes that requirement,58 this conclusion is hard to refute. But the Court ignored that there is no such limitation on the Lanham Act’s separate noncommercial use exclusion — even though Congress evidently knew how to include it if it wanted to. Instead, the noncommercial use exclusion applies to “[a]ny noncommercial use of a mark.”59
As recognized by lower courts60 — including the Ninth Circuit in Mattel, Inc. v. MCA Records, Inc.61 — the best reading of the noncommercial use exclusion is that it incorporates the First Amendment’s concept of “commercial speech,” under which speech is commercial only if it “does no more than propose a commercial transaction.”62 This interpretation is supported by the Federal Trademark Dilution Act’s63 legislative history.64 More importantly, it is the “only interpretation” of the exclusion that is consistent with the “overall purpose and structure of federal trademark dilution law” in providing “strong free speech protections” to counteract the strong dilution provisions.65
On this reading, a use of a mark in speech that does not aim to sell a separate product but is itself the product being sold — such as a song called “Barbie Girl” about life as a Barbie doll66 — is noncommercial and therefore nondilutive. And, importantly (and contrary to JDPI’s argument67), this would not render the fair use exclusion superfluous. The fair use exception is narrower in that it covers only non-source-indicating uses, but broader in that it protects parodies that are part of purely commercial speech. Take an advertisement for a video game about tanks in which Snuggle Bear is obliterated by said tanks.68 As an advertisement, the speech is solely intended to advance a commercial transaction, so it cannot be a noncommercial use. But Snuggle Bear is being parodied without being used as an indicator of source for the video game, so this would be a fair use.69 That the two exceptions might sometimes overlap does not mean one limits the other.70
Even if one is unconvinced that the noncommercial use exclusion is meant to extend to for-profit uses (such that the Bad Spaniels toy is commercial),71 it still does not contain the limitation that the Court has applied to it — which, again, Congress knew how to impose. Under the Court’s holding, uses of marks that are noncommercial by any understanding could still be dilutive if they are source indicating.
This narrowing of the noncommercial use exclusion threatens to make it easier for trademark owners to suppress free expression. Trademarks do more than indicate source — as the Supreme Court itself has recognized.72 They convey messages about what they promote, from mundane commercial products to the “momentous philosophical or political issues of the day.”73 And in contemporary consumer culture, they have substantial and increasing communicative value to individuals as well.74 They allow fans to express their support for sports teams, media franchises, celebrities, products, and lifestyles; they are used as “metaphors, similes, and metonyms”75 that “fill in gaps in our vocabulary and add a contemporary flavor to our expressions.”76 Further, using a company’s marks to criticize it ranges from a necessity (how can one criticize, for instance, Comcast without referring to it by name?) to a means of doing so more effectively.77
But as the expressive importance of trademarks has increased,78 so too have the rights of trademark owners and their ability to use trademark law to restrict speech.79 Expanding notions of confusion allow infringement suits to succeed even where confusion is “dispelled before an actual sale begins”80 or where no prospective customers (but only third parties) are likely to be confused in the first place.81 And the entrenchment of dilution in federal law — first with the 1995 passage of the Federal Trademark Dilution Act and then with the 2006 passage of the Trademark Dilution Revision Act82 — allows trademark owners to enjoin speech even where nobody is confused.83
Defendants may ultimately succeed in most cases.84 But often, they do not.85 Perhaps more importantly, because many users fold upon receipt of a cease-and-desist letter, growing trademark rights allow trademark owners to curtail even speech that would ultimately be protected by a court.86 And even where a defendant has the resources to fully litigate a case, they are more likely to win precisely because of Rogers (and other defenses that have grown alongside trademark rights) and the statutory exclusions from dilution liability.87
Jack Daniel’s will likely weaken these defenses, increasing trademark owners’ power to restrict speech.88 Because dilution claims do not require plaintiffs to show that the defendant has created a likelihood of confusion — only that a use will lessen a famous mark’s distinctiveness or harm its reputation89 — they may be easier to win than infringement claims.90 To be sure, defendants can argue that criticizing or poking fun at a mark enhances, rather than impairs, its distinctiveness.91 But this is less than reassuring (and less reassuring than the possibility of winning on likely confusion92) for three interrelated reasons. First, dilution requires a low showing: “virtually any reference to a trademark influences the consumer’s mental association regarding the brand, in ways that one could characterize as” dilutive,93 and a majority of courts treat an association between a defendant’s use and a plaintiff’s mark as sufficient for dilution.94 Second, there may be some instances — like using a mark for criticism — where confusion is simply not plausible, but dilution is.95 Third, this counter would likely not apply to tarnishment: even a use that enhances a mark’s distinctiveness by drawing attention to it can do so in a way that harms its reputation — especially in cases of criticism or commentary. Moreover, the dilution analysis may involve surveys and other costly discovery,96 making it prohibitively expensive for defendants to fully litigate these cases, whereas the statutory exclusion could be raised on a motion to dismiss.97
The Jack Daniel’s dilution holding threatens speech in a variety of contexts in which a use of a mark is both (at least arguably) source designating and valuably expressive. Such uses can take the form, for example, of criticism of the trademark owner (on so-called “gripe sites”98 or by social media accounts dedicated to criticism of a given company99); of a means of quickly signaling what a political candidate stands for;100 of commentary that uses a well-known mark as simile or metonym;101 or as a prism for reflection on the ubiquity of brands in contemporary society.102 After Jack Daniel’s, all such uses are potentially at risk.