For many years, courts often applied the quintessential likelihood-of-confusion test for trademark infringement claims more narrowly when analyzing allegedly infringing products that were also works of artistic expression. For such products, courts generally applied a threshold First Amendment test, as established by the Second Circuit in Rogers v. Grimaldi. However, in Jack Daniel’s Properties, Inc. v. VIP Products, LLC, the U.S. Supreme Court held that the Rogers test does not apply “when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer’s own goods.” Since then, some courts—relying on Jack Daniel’s—have refused to apply Rogers to expressive works that use trademarks as a source designator. You can read more about the Supreme Court’s Jack Daniel’s decision in our article SCOTUS: Dog Toy in the Doghouse as Jack Daniel’s Trademark Infringement Claims Remanded to District Court, and about a Second Circuit case applying Jack Daniel’s in our article Parody Sneaker Afforded No First Amendment Protection Against Vans’ Trademark Infringement Claims. The Ninth Circuit, relying on Jack Daniel’s, also recently refused to apply Rogers and revived a trademark infringement suit brought by Punchbowl, Inc. against a news publication using the term “Punchbowl,” even though the publication was an expressive work.
