64 | Weil, Gotshal & Manges LLP LITIGATION TRENDS 2024 | 65 T O C E M P A N T I I P C A P R O W C C O N T A C T I N T A P P P A T C C L S E C and that, in other contexts, the first factor could weigh in the Warhol Foundation’s favor. Thus, for example, a dispute over a display of the print in a museum could well have a different outcome. The decision is nonetheless instructive as it makes clear that one should not rely solely on the aesthetic nature of the alleged infringing work. Instead, the purpose of the work’s use, and how it compares to that of the original, should be front and center and weighed against commerciality. Parody Defense Post-Jack Daniel’s Following shortly after Goldsmith, the Supreme Court issued another opinion granting greater protection to intellectual property owners and limiting the scope of parody as a defense to trademark infringement. See Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023). VIP Products LLC (“VIP”) produces a line of dog chew toys modeled after popular alcoholic beverage brands, including a “Bad Spaniels” chew toy that plays off of the Jack Daniel’s bottle and branding. After Jack Daniel’s demanded that VIP stop producing the toy, VIP brought suit seeking a declaratory judgment that it neither infringed nor diluted the Jack Daniel’s trademarks. Jack Daniel’s counterclaimed for trademark infringement and trademark dilution. VIP moved for summary judgment on both of its claims, alleging that, as an “expressive work” implicating First Amendment values, the Bad Spaniels toy was not infringing under the Rogers analysis unless Jack Daniel’s could show “the challenged use of a mark ‘has no artistic relevance to the underlying work’ or that it ‘explicitly misleads as to the source or the content of the work.’” 599 U.S. at 151 (quoting Rogers v. Grimaldi, 875 F. 2d 994, 999 (2nd Cir. 1989)). VIP also argued it must prevail on the dilution claim because “Bad Spaniels” was a parody of Jack Daniel’s and therefore made fair use of the mark. The district court rejected both arguments, but the Ninth Circuit reversed, awarding judgment on the dilution claim and remanding the infringement claim for a determination on whether the Rogers factors applied. After a bench trial, the district court concluded that Jack Daniel’s met neither Rogers test prong, and the Ninth Circuit affirmed. On further appeal, the Supreme Court evaluated the Ninth Circuit’s prior ruling, specifically: (i) whether Jack Daniel’s should have had to “satisfy the Rogers threshold test before the case could proceed to the Lanham Act’s likelihood-of-confusion inquiry”; and (ii) whether a parody use bars dilution claims as a matter of law. Id. at 152-153, 161. A unanimous Supreme Court rejected the Ninth Circuit’s analysis and remanded for further proceedings. First, while the Court did not address the merits of the Rogers analysis, it held that the Rogers test has applied “only to cases involving ‘non-trademark uses’” and does not apply when the alleged infringer uses “a trademark as a trademark,” that is, to designate the source of its goods. Id. at 155-157. The Court held that the Ninth Circuit was therefore mistaken in applying the Rogers test simply because Bad Spaniels “communicates a humorous message.” Id. at 158. Since VIP used the Bad Spaniels mark and accompanying trade dress as source identifiers, infringement must be analyzed through the traditional likelihood-of-confusion analysis, though the Court acknowledged that parodic nature of the use may impact that analysis. Second, on the dilution by tarnishment claim, the Court determined that the exclusion under the Lanham Act for “any noncommercial use of the mark” cannot include “every parody or humorous commentary.” Id. at 162. Again, because the use of the mark was source-identifying, the Court concluded it could not be shielded from a dilution claim. Both parties requested that the Court go further on the Rogers analysis and either embrace or disclaim the test, but the Court explicitly declined to do so. While this holding is narrow and limited to the use of another’s mark as a source-identifier, those claiming exemption from infringement or dilution claims based on the IP/Media I P
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