## Facts

- Jack Daniel’s Properties, Inc. owned trademarks and trade dress associated with JACK DANIEL’S whiskey, including a distinctive bottle and label design.
- VIP Products LLC sold “Silly Squeakers” dog toys resembling famous beverage containers, including a “Bad Spaniels” toy mimicking Jack Daniel’s bottle and label with humorous alterations.
- The toy replaced “Jack Daniel’s” with “Bad Spaniels” and changed other label text to jokes referencing dog waste; it also included a small disclaimer of nonaffiliation.
- VIP sought a declaratory judgment that its toy did not infringe or dilute; Jack Daniel’s counterclaimed under the Lanham Act for infringement (likelihood of confusion) and dilution by tarnishment.
- The district court found infringement and dilution and enjoined VIP from selling the toy.
- The Ninth Circuit reversed, treating the toy as an “expressive work,” applying the Rogers test to the infringement claim, and holding the dilution claim barred by the statutory “noncommercial use” exclusion.
- The Supreme Court granted certiorari to address the proper standards for infringement and dilution when a parody appears on a commercial product.

## Issues

1. Whether the Rogers test applies when a defendant uses another’s trademark and trade dress as a source identifier for the defendant’s own commercial goods.
2. Whether the Lanham Act’s dilution “noncommercial use” exclusion categorically bars a dilution-by-tarnishment claim against a commercially sold parodic product that uses the mark as a source identifier.

## Decision

- The Court vacated the Ninth Circuit’s judgment and remanded.
- The Rogers test does not apply when the accused use is “as a mark,” meaning it designates source for the defendant’s own goods; ordinary likelihood-of-confusion analysis governs.
- The dilution “noncommercial use” exclusion does not automatically shield a parody when the parody is used as a source identifier for goods sold in commerce.
- The Court did not decide whether VIP’s toy in fact infringed or diluted; it required the lower courts to apply traditional infringement and dilution analyses.

## Legal Principles

- Trademarks’ central function under the Lanham Act is source identification; infringement turns on likelihood of consumer confusion.
- Rogers is a threshold screen aimed at certain expressive uses of marks; it is inapplicable when the defendant uses the challenged mark/trade dress to brand its own products.
- Parody is not a categorical defense to infringement; it may be considered within the likelihood-of-confusion factors because humor can signal non-source and reduce confusion.
- The dilution statute’s “noncommercial use” exclusion does not categorically cover commercially marketed, source-identifying parody; such uses may still be evaluated for tarnishment under ordinary dilution doctrine.

## Conclusion

The Court held that when a parody functions as branding for a commercial product, trademark infringement is analyzed under the Lanham Act’s standard likelihood-of-confusion framework rather than Rogers, and the dilution “noncommercial use” exclusion does not automatically bar a tarnishment claim; the case was remanded for application of those ordinary standards.


Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 599 U.S. 140 (2023)