Ninth Circuit Pulls Back Rogers Test in Light of Jack Daniels Decision

As Scott Hervey previously wrote on the IP Law Blog, the holding in the Supreme Court case Jack Daniels Properties v. VIP Products limits the applicability of the Rogers test. Scott and Jamie Lincenberg talk about this case on this episode of The Briefing. Watch this episode on the Weintraub YouTube channel here. Cases Discussed: Jack Daniels Properties v. VIP Products Rogers v. Grimaldi Punch Bowl v. AJ Press 20th Century Fox Television v. Empire Distribution, Inc. Show Notes: Scott: The holding in Jack Daniels properties versus VIP products. The case of the infringing bad spaniel's dog toy limits the applicability of the Rogers test. A recent case in the 9th Circuit Punch bowl versus AJ press addressed the interplay between the Jack Daniels opinion and the Rogers test, and this case goes directly to the heart of Rogers versus Grimaldi. We are going to talk about this case and the future of the Rogers Test on this installment of the briefing by Weintraub Tobin. Thank you for joining us. I'm Scott Hervey from Weintraub Tobin, and I'm joined by my colleague Jamie Lincenberg. Jamie, welcome back to The Briefing. Jamie: Thanks, Scott. It's good to be back after a little bit of a hiatus. Scott: Yeah, good to have you back. So, before we get into the case itself, I think we should set the stage and talk a little bit about both the Rogers test from Rogers versus Grimaldi and the Jack Daniels case. Jamie: That sounds good. So, the Rogers test comes from the 1989 2nd Circuit case, Rogers versus Grimaldi. The case involved a lawsuit brought by Ginger Rogers concerning the film entitled Fred and Ginger, which was about two Italian cabaret performers whose act emulated the dance routines of Fred Astaire and Ginger Rogers. The question of that case was whether the creator of an expressive work, a work that enjoys First Amendment protection, could be liable under the Lanham Act, as well as state right of publicity laws for using a celebrity's name in the title of the work. Scott: The district court and the Second Circuit on appeal both said no and from that case, the Rogers test was created under the Rogers test. The use of a third-party mark in an expressive work does not violate the Lanham Act unless the title has no artistic relevance to the underlying work whatsoever or if it has some artistic relevance. It can't be expressly misleading as to the source or content of the work. Under the Rogers test, the first inquiry is whether the use of the third-party mark has some artistic irrelevance. The threshold for this test is extremely low. Basically, if the level of artistic relevance is more than nothing, this is satisfied. If there is a greater-than-nothing artistic relevance in the use of the third-party mark, then the next analysis is whether the use of the third-party mark explicitly misleads as to the source of content or the work. And the Rogers test has been widely adopted by other circuits, including California's 9th Circuit. Jamie: On June 8, 2023, the United States Supreme Court decided Jack Daniels Properties, Inc. Versus VIP products. This dispute involves a claim by Jack Daniels that the dog toy Bad Spaniels infringed a number of its trademarks at the district court and on appeal at the 9th Circuit, the issue was framed as whether this dog toy was an expressive work since trademark claims involving expressive works are analyzed under the Rogers test. Scott: On appeal, the Supreme Court said that the issue really was not whether the dog toy was an expressive work but rather the nature of the use of Jack Daniel's mark by VIP products. The Supreme Court found that VIP's use of the marks, while humorous for sure, was for the purpose of serving as a source identifier, trademark use. In other words, the Supreme Court held that the Rogers test does not apply to instances where the mark is used as a source identifier, regardless of whether it's also used to perform some expressiv...