Page:Jack Daniel's Properties v. VIP Products.pdf/14

10 could not satisfy either prong of Rogers, and so granted summary judgment to VIP on infringement. Jack Daniel’s appealed, and the Ninth Circuit summarily affirmed.

We then granted certiorari to consider the Court of Appeals’ rulings on both infringement and dilution. 598 U. S. ___ (2022).

Our first and more substantial question concerns Jack Daniel’s infringement claim: Should the company have had to satisfy the Rogers threshold test before the case could proceed to the Lanham Act’s likelihood-of-confusion inquiry? The parties address that issue in the broadest possible way, either attacking or defending Rogers in all its possible applications. Today, we choose a narrower path. Without deciding whether Rogers has merit in other contexts, we hold that it does not 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. See §1127;. VIP used the marks derived from Jack Daniel’s in that way, so the infringement claim here rises or falls on likelihood of confusion. But that inquiry is not blind to the expressive aspect of the Bad Spaniels toy that the Ninth Circuit highlighted. Beyond source designation, VIP uses the marks at issue in an effort to “parody” or “make fun” of Jack Daniel’s. Tr. of Oral Arg. 58, 66. And that kind of message matters in assessing confusion because consumers are not so likely to think that the maker of a mocked product is itself doing the mocking.

To see why the Rogers test does not apply here, first consider the case from which it emerged. The defendants there