Page:Jack Daniel's Properties v. VIP Products.pdf/12

8 Soon after Bad Spaniels hit the market, Jack Daniel’s sent VIP a letter demanding that it stop selling the product. VIP responded by bringing this suit, seeking a declaratory judgment that Bad Spaniels neither infringed nor diluted Jack Daniel’s trademarks. The complaint alleged, among other things, that VIP is “the owner of all rights in its ‘Bad Spaniels’ trademark and trade dress for its durable rubber squeaky novelty dog toy.” App. 3; see. Jack Daniel’s counterclaimed under the Lanham Act for both trademark infringement and trademark dilution by tarnishment.

VIP moved for summary judgment on both claims. First, VIP argued that Jack Daniel’s infringement claim failed under a threshold test derived from the First Amendment to protect “expressive works”—like (VIP said) the Bad Spaniels toy. When those works are involved, VIP contended, the so-called Rogers test requires dismissal of an infringement claim at the outset unless the complainant can show one of two things: that 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.” Rogers v. Grimaldi, 875 F. 2d 994, 999 (CA2 1989) (Newman, J.). Because Jack Daniel’s could make neither showing, VIP argued, the likelihood-of-confusion issue became irrelevant. Second, VIP urged that Jack Daniel’s could not succeed on a dilution claim because Bad Spaniels was a “parody[]” of Jack Daniel’s, and therefore made “fair use” of its famous marks. §1125(c)(3)(A)(ii).

The District Court rejected both contentions for a common reason: because VIP had used the cribbed Jack Daniel’s features as trademarks—that is, to identify the source of its own products. In the court’s view, when “another’s trademark is used for source identification”—as the court thought was true here—the threshold Rogers test does not apply. App. to Pet. for Cert. 89a. Instead, the suit must address the “standard” infringement question: whether the