Justices Eye Speech-Trademark Test Revamp in Jack Daniel’s Case

March 23, 2023 – Media Mention
Bloomberg Law

Barry Werbin, counsel in Herrick's Intellectual Property Group, spoke to Bloomberg Law about the arguments before the U.S. Supreme Court in a case centered on "a pun-laden, Jack Daniel's bottle-shaped 'Bad Spaniels' dog toy to rein in a test for trademark use in expressive works."

The article discusses the "Rogers test," created by the Second Circuit in its decision in Rogers v. Grimaldi, which allows "trademark use in an expressive work without the owner's permission if it's artistically relevant and not explicitly misleading." According to the article, counsel for the dog toy argued that the balancing test should be left largely undisturbed as a "broad gatekeeper before courts analyze the likely of customer confusion for products riffing on others' marks." In contrast, counsel for Jack Daniel's pushed to "shunt the First Amendment concerns aside in a bid to nullify the test."  

“I think the sense is they’re trying not to have to overtly overrule Rogers, and find middle ground,” Barry said, suggesting the court indicated it might try to develop a modified likelihood of confusion test to apply to parody in the early stages of litigation.

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