MORGAN GARCES—Parody enjoys many First Amendment protections. So much so, that poking fun at common trademarks has become a staple in modern media: Weird Al sings about being Trapped in the Drive Through, as opposed to R. Kelly’s Trapped in the Closet, and the joker sleeps well at night knowing that he has the trademark defense of parody on his side. However, after a decade-long battle, a 2023 Supreme Court decision granted a narrow exception to the parody defense, which Jack Daniel’s utilized to protect their trademarked bottles in a recent January 2025 decision. With the chiseling away at the parody defense, what does this mean for future comedic commentary?
Back in June 2023, the Supreme Court decided Jack Daniel’s Properties, Inc. v. VIP Products LLC. In this case, Jack Daniel’s brought a trademark infringement action against a dog toy company, VIP Products, based on toys parodying the classic whiskey brand. The toy in question was titled “Bad Spaniel’s,” and replaced the Jack Daniel’s slogan, “Old No. 7 Brand Tennessee Sour Mash Whiskey,” with “The Old No. 2 On Your Tennessee Carpet.” Jack Daniel’s owned trademarks for both the shape of the bottle as well as the words that appeared upon it. In 2014, after receiving a cease and desist letter, VIP Products requested a declaratory judgment that any claim of infringement would fail under the Rogers test—a framework intended to protect First Amendment interests from trademark claims. The Rogers test has two possible qualifiers: the challenged work either (1) “has no artistic relevance to the underlying work” or (2) “explicitly misleads as to the source or the content of the work.”
The debate in the lower courts was whether VIP Products satisfied the Rogers test. The district court rejected VIP Product’s position that they passed the Rogers test analysis because their product did not qualify as fair use, a doctrine allowing the use of copyrighted work for criticism, comment, news reporting, teaching, scholarship, or research. The parody toy used features of the trademarked whiskey bottle, failing the Rogers test’s first factor. Further, the work was not excluded under parody because the toy used Jack Daniel’s famous marks to identify them as the source of the joke. The district court ultimately found that the toy did not overcome the second qualifier of the Rogers test because consumers were likely to confuse the two products, and the association of excrement (“The Old No. 2”) could damage Jack Daniel’s brand, thus ruling for the plaintiff. However, the Ninth Circuit reversed, concluding that the parody did fall within the protections of the Rogers test.
Jack Daniel’s appealed to the Supreme Court, who decided that the Rogers test did not apply because parodies are exempt from liability only if the trademark is not being used to identify the source. The Court found that VIP Products’ work did not receive First Amendment protections because the trademark from Jack Daniel’s was used to designate the source of work. Additionally, the Court found that though a trademark is being used in a parody setting, it may still constitute commercial use. The Court differentiated this case from Mattel, Inc. v. MCA Records, Inc. because when the band Aqua sang the trademarked name “Barbie,” in their song Barbie Girl it was not to identify the origin of the joke; rather, they used phrases like “life in plastic, it’s fantastic” to do so. On the other hand, in this Jack Daniel’s holding, the Court arrived at a narrow finding in stating that the Rogers test “does not apply when the challenged use of a mark is as a mark.” The case ultimately pivoted based on whether a consumer would be confused by the parody toy, then the Court vacated the lower court’s decision and remanded for further proceedings under this decision.
Without First Amendment protections, VIP Products found themselves now vulnerable under the United States Trademark Act. On January 23, 2025, VIP Products felt the impact of this new decision. Back in the lower court, VIP Products argued that even without the analysis of the Rogers test, Jack Daniel’s failed to prove that the parody dog toy created any confusion among customers. The Arizona District court agreed, using the Sleekcraft factors to identify the likelihood of confusion: (1) the strength of the plaintiff’s trademark, (2) the relatedness of the two goods, (3) the similarity between the two parties’ marks, (4) evidence of actual confusion, (5) the marketing channels used, (6) the type of goods and degree of care likely to be exercised by the buyer, (7) the defendant’s intent in adopting the mark, and (8) the likelihood of expansion into the parties’ product lines. Although such analysis precluded a finding for trademark infringement, the court did find trademark dilution. VIP Products’ “non-confusing parody product” was still impermissible because of the action of tarnishment. Associating Jack Daniel’s whiskey with being “43% POO BY VOL.” and “100% SMELLY” was enough for the court to issue an injunction and close the book on this ten-year ordeal.
The narrowing of the application of the Rogers test means that companies need to be more careful with how they engage in parody. Going forward, when creating a parody product, companies must consider how they are using the trademarked property. Is the reference to a trademark being used to identify the trademark? If so, the company may want to consider utilizing different references to identify the source of their joke, without touching upon an already protected material. If not, they might find themselves in 100% POO BY VOL.
