What Happened to the Rogers Test After the Jack Daniels Supreme Court Case?

Sarah S. Brooks
Venable LLP

SOPHIA I. DUENAS
Venable LLP

THE SECOND CIRCUIT DEVELOPED THE ROGERS TEST to balance First Amendment rights against trademark rights, thus narrowing the scope of the Lanham Act to protect works of artistic expression. But in the recent Supreme Court case Jack Daniel’s v. VIP Products, the Court limited the applicability of the Rogers test and determined that the Rogers test does not apply when a mark is being used as a designation of source for the infringer’s own goods regardless of whether the trademark use is through an expressive work.¹ Further, the Court found that there is no special protection from liability just because the use of the trademark parodies or comments on another’s products. For parody to apply, such use would need to be noncommercial. Thus, nearly a year after the Supreme Court’s decision in Jack Daniel’s v. VIP Products the survival of the Rogers test remains uncertain.

Although the Supreme Court technically left the Rogers test untouched, it appears that Rogers now only applies if a work is expressive and if the use of the infringing mark is not as a source identifier. It’s hard to imagine the limited circumstances of when these conditions may be met. Indeed, because the Lanham Act requires that a trademark be used in commerce, could all trademark use be characterized as a commercial use? Courts may begin to treat any form of commercial use as the predominant factor in determining whether to apply the Rogers test or perform a likelihood of confusion inquiry. We submit this is an oversimplified treatment of the issue.