Jack Daniel's Properties, Inc v. VIP Products LLC

NOTICE: This opinion is subject to
formal revision before publication in the United States Reports.
Readers are requested to notify the Reporter of Decisions, Supreme
Court of the United States, Washington, D. C. 20543,
pio@supremecourt.gov, of any typographical or other formal
errors.

															SUPREME COURT OF THE UNITED STATES

															_________________

															No. 22–148

															_________________

															JACK DANIEL’S PROPERTIES, INC., PETITIONER v. VIP PRODUCTS LLC

															on writ of certiorari to the united states
court of appeals for the ninth circuit

															[June 8, 2023]

															Justice Kagan delivered the opinion of the
Court.

															This case is about dog toys and whiskey, two
items seldom appearing in the same sentence. Respondent VIP
Products makes a squeaky, chewable dog toy designed to look like a
bottle of Jack Daniel’s whiskey. Though not entirely. On the toy,
for example, the words “Jack Daniel’s” become “Bad Spaniels.” And
the descriptive phrase “Old No. 7 Brand Tennessee Sour Mash
Whiskey” turns into “The Old No. 2 On Your Tennessee Carpet.” The
jokes did not impress petitioner Jack Daniel’s Properties. It owns
trademarks in the distinctive Jack Daniel’s bottle and in many of
the words and graphics on the label. And it believed Bad Spaniels
had both infringed and diluted those trademarks. Bad Spaniels had
infringed the marks, the argument ran, by leading consumers to
think that Jack Daniel’s had created, or was otherwise responsible
for, the dog toy. And Bad Spaniels had diluted the marks, the
argument went on, by associating the famed whiskey with, well, dog
excrement.

															The Court of Appeals, in the decision we review,
saw things differently. Though the federal trademark statute makes
infringement turn on the likelihood of consumer confusion, the
Court of Appeals never got to that issue. On the court’s view, the
First Amendment compels a stringent threshold test when an
infringement suit challenges a so-called expressive work—here (so
said the court), the Bad Spaniels toy. And that test knocked out
Jack Daniel’s claim, whatever the likelihood of confusion.
Likewise, Jack’s dilution claim failed—though on that issue the
problem was statutory. The trademark law provides that the
“noncommercial” use of a mark cannot count as dilution. 15
U. S. C. §1125(c)(3)(C). The Bad Spaniels marks, the
court held, fell within that exemption because the toy communicated
a message—a kind of parody—about Jack Daniel’s.

															Today, we reject both conclusions. The
infringement issue is the more substantial. In addressing it, we do
not decide whether the threshold inquiry applied in the Court of
Appeals is ever warranted. We hold only that it is not appropriate
when the accused infringer has used a trademark to designate the
source of its own goods—in other words, has used a trademark as a
trademark. That kind of use falls within the heartland of trademark
law, and does not receive special First Amendment protection. The
dilution issue is more simply addressed. The use of a mark does not
count as noncommercial just because it parodies, or otherwise
comments on, another’s products.

															I

															A

															Start at square 1, with what a trademark is
and does. The Lanham Act, the core federal trademark statute,
defines a trademark as follows: “[A]ny word, name, symbol, or
device, or any combination thereof ” that a person uses “to
identify and distinguish his or her goods . . . from
those manufactured or sold by others and to indicate the source of
the goods.” §1127. The first part of that definition, identifying
the kind of things covered, is broad: It encompasses words (think
“Google”), graphic designs (Nike’s swoosh), and so-called trade
dress, the overall appearance of a product and its packaging (a
Hershey’s Kiss, in its silver wrapper). See Wal-Mart Stores,
Inc. v. Samara Brothers, Inc. , 529
U.S. 205 , 209–210 (2000). The second part of the definition
describes every trademark’s “primary” function: “to identify the
origin or ownership of the article to which it is affixed.” Hanover Star Milling Co. v. Metcalf , 240 U.S.
403 , 412 (1916). Trademarks can of course do other things:
catch a consumer’s eye, appeal to his fancies, and convey every
manner of message. But whatever else it may do, a trademark is not
a trademark unless it identifies a product’s source (this is a
Nike) and distinguishes that source from others (not any other
sneaker brand). See generally 1 J. McCarthy, Trademarks and Unfair
Competition §3:1 (5th ed. 2023). In other words, a mark tells the
public who is responsible for a product.

															In serving that function, trademarks benefit
consumers and producers alike. A source-identifying mark enables
customers to select “the goods and services that they wish to
purchase, as well as those they want to avoid.” Matal v. Tam , 582 U.S. 218, 224 (2017). The mark “quickly and easily
assures a potential customer that this item—the item with
this mark—is made by the same producer as other similarly marked
items that he or she liked (or disliked) in the past.” Qualitex
Co. v. Jacobson Products Co. , 514
U.S. 159 , 164 (1995). And because that is so, the producer of a
quality product may derive significant value from its marks. They
ensure that the producer itself—and not some “imitating
competitor”—will reap the financial rewards associated with the
product’s good reputation. Ibid. To help protect marks, the Lanham Act sets up a
voluntary registration system. Any mark owner may apply to the
Patent and Trademark Office to get its mark placed on a federal
register. Consistent with trademark law’s basic purpose, the lead
criterion for registration is that the mark “in fact serve as a
‘trademark’ to identify and distinguish goods.” 3 McCarthy §19:10
(listing the principal register’s eligibility standards). If it
does, and the statute’s other criteria also are met, the
registering trademark owner receives certain benefits, useful in
infringement litigation. See, e.g. , Iancu v. Brunetti , 588 U. S. ___, ___ (2019) (slip op., at 2)
(noting that “registration constitutes ‘prima facie evidence’ of
the mark’s validity”). But the owner of even an unregistered
trademark can “use [the mark] in commerce and enforce it against
infringers.” Ibid. The Lanham Act also creates a federal cause of
action for trademark infringement. In the typical case, the owner
of a mark sues someone using a mark that closely resembles its own.
The court must decide whether the defendant’s use is “likely to
cause confusion, or to cause mistake, or to deceive.” §§1114(1)(A),
1125(a)(1)(A). The “keystone” in that statutory standard is
“likelihood of confusion.” See 4 McCarthy §23:1. And the single
type of confusion most commonly in trademark law’s sights is
confusion “about the source of a product or service.” Moseley v. V Secret Catalogue, Inc. , 537 U.S.
418 , 428 (2003); see 4 McCarthy §23:5. Confusion as to source
is the bête noire of trademark law—the thing that stands directly
opposed to the law’s twin goals of facilitating consumers’ choice
and protecting producers’ good will.

															Finally, the Lanham Act creates a cause of
action for the dilution of famous marks, which can succeed without
likelihood of confusion. See §1125(c); Moseley , 537
U. S., at 431. A famous mark is one “widely recognized” by the
public as “designati[ng the] source” of the mark owner’s goods.
§1125(c)(2)(A). Dilution of such a mark can occur “by tarnishment”
(as well as by “blurring,” not relevant here). §1125(c)(1). As the
statute describes the idea, an “association arising from the
similarity between” two marks—one of them famous—may “harm[ ]
the reputation of the famous mark,” and thus make the other mark’s
owner liable. §1125(c)(2)(C). But there are
“[e]xclusions”—categories of activity not “actionable as dilution.”
§1125(c)(3). One exclusion protects any “noncommercial use of a
mark.” §1125(c)(3)(C). Another protects a “fair use” of a mark “in
connection with . . . parodying, criticizing, or
commenting upon the famous mark owner or [its] goods.”
§1125(c)(3)(A)(ii). The fair-use exclusion, though, comes with a
caveat. A defendant cannot get its benefit—even if engaging in
parody, criticism, or commentary—when using the similar-looking
mark “as a designation of source for the [defendant’s] own goods.”
§1125(c)(3)(A). In other words, the exclusion does not apply if the
defendant uses the similar mark as a mark.

															B

															A bottle of Jack Daniel’s—no, Jack Daniel’s
Old No. 7 Tennessee Sour Mash Whiskey—boasts a fair number of
trademarks. Recall what the bottle looks like (or better yet,
retrieve a bottle from wherever you keep liquor; it’s probably
there):

															“Jack Daniel’s” is a registered trademark, as
is “Old No. 7.” So too the arched Jack Daniel’s logo. And the
stylized label with filigree ( i.e. , twirling white lines).
Finally, what might be thought of as the platform for all those
marks—the whiskey’s distinctive square bottle—is itself
registered.

															VIP is a dog toy company, making and selling a
product line of chewable rubber toys that it calls “Silly
Squeakers.” (Yes, they squeak when bitten.) Most of the toys in the
line are designed to look like—and to parody—popular beverage
brands. There are, to take a sampling, Dos Perros (cf. Dos Equis),
Smella Arpaw (cf. Stella Artois), and Doggie Walker (cf. Johnnie
Walker). VIP has registered trademarks in all those names, as in
the umbrella term “Silly Squeakers.”

															In 2014, VIP added the Bad Spaniels toy to the
line. VIP did not apply to register the name, or any other feature
of, Bad Spaniels. But according to its complaint (further addressed
below), VIP both “own[s]” and “use[s]” the “ ‘Bad Spaniels’
trademark and trade dress.” App. 3, 11; see infra , at 8, 17.
And Bad Spaniels’ trade dress, like the dress of many Silly
Squeakers toys, is designed to evoke a distinctive beverage
bottle-with-label. Even if you didn’t already know, you’d probably
not have much trouble identifying which one.

															Bad Spaniels is about the same size and shape
as an ordinary bottle of Jack Daniel’s. The faux bottle, like the
original, has a black label with stylized white text and a white
filigreed border. The words “Bad Spaniels” replace “Jack Daniel’s”
in a like font and arch. Above the arch is an image of a spaniel.
(This is a dog toy, after all.) Below the arch, “The Old No. 2 On
Your Tennessee Carpet” replaces “Old No. 7 Tennessee Sour Mash
Whiskey” in similar graphic form. The small print at the bottom
substitutes “43% poo by vol.” and “100% smelly” for “40% alc. by
vol. (80 proof ).”

															The toy is packaged for sale with a cardboard
hangtag (so it can be hung on store shelves). Here is the back of
the hangtag:

															At the bottom is a disclaimer: “This product
is not affiliated with Jack Daniel Distillery.” In the middle are
some warnings and guarantees. And at the top, most relevant here,
are two product logos—on the left for the Silly Squeakers line, and
on the right for the Bad Spaniels toy.

															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 supra , at 6. 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 use is “likely to cause consumer confusion.” Ibid. And likewise, VIP could not invoke the dilution
provision’s fair-use exclusion. Parodies fall within that
exclusion, the court explained, only when the uses they make of
famous marks do not serve as “a designation of source for the
[alleged diluter’s] own goods.” Id. , at 104a (quoting
§1125(c)(3)(A)).

															The case thus proceeded to a bench trial, where
Jack Daniel’s prevailed. The District Court found, based largely on
survey evidence, that consumers were likely to be confused about
the source of the Bad Spaniels toy. See 291 F. Supp. 3d 891,
906–911 (D Ariz. 2018). And the court thought that the toy, by
creating “negative associations” with “canine excrement,” would
cause Jack Daniel’s “reputational harm.” Id. , at 903,
905.

															But the Court of Appeals for the Ninth Circuit
reversed, ruling that the District Court had gotten the pretrial
legal issues wrong. In the Ninth Circuit’s view, the infringement
claim was subject to the threshold Rogers test because Bad
Spaniels is an “expressive work”: Although just a dog toy, and
“surely not the equivalent of the Mona Lisa ,” it
“communicates a humorous message.” 953 F.3d 1170, 1175 (2020)
(internal quotation marks omitted). The Court of Appeals therefore
returned the case to the District Court to decide whether Jack
Daniel’s could satisfy either of Rogers ’ two prongs. And the
Ninth Circuit awarded judgment on the dilution claim to VIP. The
court did not address the statutory exclusion for parody and other
fair use, as the District Court had. Instead, the Court of Appeals
held that the exclusion for “noncommercial use” shielded VIP from
liability. §1125(c)(3)(C). The “use of a mark may be
‘noncommercial,’ ” the court reasoned, “even if used to sell a
product.” 953 F. 3d, at 1176 (internal quotation marks
omitted). And here it was so, the court found, because it
“parodies” and “comments humorously” on Jack Daniel’s. Id. ,
at 1175; see id. , at 1176.

															On remand, the District Court found that Jack
Daniel’s 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).

															II

															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?[ 1 ] 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; supra , at 2–3. 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.

															A

															To see why the Rogers test does not
apply here, first consider the case from which it emerged. The
defendants there had produced and distributed a film by Federico
Fellini titled “Ginger and Fred” about two fictional Italian
cabaret dancers (Pippo and Amelia) who imitated Ginger Rogers and
Fred Astaire. When the film was released in the United States,
Ginger Rogers objected under the Lanham Act to the use of her name.
The Second Circuit rejected the claim. It reasoned that the titles
of “artistic works,” like the works themselves, have an “expressive
element” implicating “ First Amendment values.” 875 F. 2d, at
998. And at the same time, such names posed only a “slight risk” of
confusing consumers about either “the source or the content of the
work.” Id. , at 999–1000. So, the court concluded, a
threshold filter was appropriate. When a title “with at least some
artistic relevance” was not “explicitly misleading as to source or
content,” the claim could not go forward. Ibid. But the
court made clear that it was not announcing a general rule. In the
typical case, the court thought, the name of a product was more
likely to indicate its source, and to be taken by consumers in just
that way. See id. , at 1000.

															Over the decades, the lower courts adopting Rogers have confined it to similar cases, in which a
trademark is used not to designate a work’s source, but solely to
perform some other expressive function. So, for example, when the
toymaker Mattel sued a band over the song “Barbie Girl”—with lyrics
including “Life in plastic, it’s fantastic” and “I’m a blond bimbo
girl, in a fantasy world”—the Ninth Circuit applied Rogers . Mattel, Inc. v. MCA Records, Inc. , 296 F.3d 894 , 901 (2002). That was because, the court reasoned,
the band’s use of the Barbie name was “not [as] a source
identifier”: The use did not “speak[ ] to [the song’s]
origin.” Id. , at 900, 902; see id. , at 902 (a
consumer would no more think that the song was “produced by Mattel”
than would, “upon hearing Janis Joplin croon ‘Oh Lord, won’t you
buy me a Mercedes Benz?,’ . . . suspect that she and the
carmaker had entered into a joint venture”). Similarly, the
Eleventh Circuit dismissed a suit under Rogers when a sports
artist depicted the Crimson Tide’s trademarked football uniforms
solely to “memorialize” a notable event in “football history.” University of Ala. Bd. of Trustees v. New Life Art,
Inc. , 683 F.3d 1266, 1279 (2012). And when Louis Vuitton sued
because a character in the film The Hangover: Part II described his
luggage as a “Louis Vuitton” (though pronouncing it Lewis ),
a district court dismissed the complaint under Rogers . See Louis Vuitton Mallatier S. A. v. Warner Bros. Entertainment Inc. , 868 F. Supp. 2d 172 (SDNY 2012). All
parties agreed that the film was not using the Louis Vuitton mark
as its “own identifying trademark.” Id. , at 180 (internal
quotation marks omitted). When that is so, the court reasoned,
“confusion will usually be unlikely,” and the “interest in free
expression” counsels in favor of avoiding the standard Lanham Act
test. Ibid. The same courts, though, routinely conduct
likelihood-of-confusion analysis, without mentioning Rogers ,
when trademarks are used as trademarks— i.e. , to designate
source. See, e.g. , JL Beverage Co., LLC v. Jim
Beam Brands Co. , 828 F.3d 1098, 1102–1103, 1106 (CA9 2016); PlayNation Play Systems, Inc. v. Velex Corp. , 924
F.3d 1159, 1164–1165 (CA11 2019). And the Second
Circuit— Rogers ’ home court—has made especially clear that Rogers does not apply in that context. For example, that
court held that an offshoot political group’s use of the trademark
“United We Stand America” got no Rogers help because the use
was as a source identifier. See United We Stand Am., Inc. v. United We Stand, Am. New York, Inc. , 128 F.3d 86 , 93 (1997). True, that slogan had expressive
content. But the defendant group, the court reasoned, was using it
“as a mark,” to suggest the “same source identification” as the
original “political movement.” Ibid. And similarly, the
Second Circuit (indeed, the judge who authored Rogers )
rejected a motorcycle mechanic’s view that his modified version of
Harley Davidson’s bar-and-shield logo was an expressive parody
entitled to Rogers ’ protection. See Harley-Davidson,
Inc. v. Grottanelli , 164 F.3d 806 , 812–813 (1999). The court acknowledged that the
mechanic’s adapted logo conveyed a “somewhat humorous[ ]”
message. Id. , at 813. But his use of the logo was a
quintessential “trademark use”: to brand his “repair and parts
business”—through signage, a newsletter, and T-shirts—with images
“similar” to Harley-Davidson’s. Id. , at 809, 812–813.

															The point is that whatever you make of Rogers —and again, we take no position on that issue—it has
always been a cabined doctrine. If we put this case to the side,
the Rogers test has applied only to cases involving
“non-trademark uses”—or otherwise said, cases in which “the
defendant has used the mark” at issue in a “non-source-identifying
way.” S. Dogan & M. Lemley, Grounding Trademark Law Through
Trademark Use, 92 Iowa L. Rev. 1669, 1684 (2007); see id. , at 1683–1684, and n. 58. The test has not insulated
from ordinary trademark scrutiny the use of trademarks as
trademarks, “to identify or brand [a defendant’s] goods or
services.” Id. , at 1683.

															We offer as one last example of that limitation
a case with a striking resemblance to this one. It too involved dog
products, though perfumes rather than toys. Yes, the defendant sold
“a line of pet perfumes whose names parody elegant brands sold for
human consumption.” Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC , 221 F. Supp. 2d 410 , 412 (SDNY 2002) (Mukasey, J.). The product
at issue was named Timmy Holedigger—which Tommy Hilfiger didn’t
much like. The defendant asked for application of Rogers .
The court declined it, relying on Harley-Davidson . See 221
F. Supp. 2d, at 414. Rogers , the court explained, kicks
in when a suit involves solely “nontrademark uses of [a] mark—that
is, where the trademark is not being used to indicate the source or
origin” of a product, but only to convey a different kind of
message. 221 F. Supp. 2d, at 414. When, instead, the use is
“at least in part” for “source identification”—when the defendant
may be “trading on the good will of the trademark owner to market
its own goods”— Rogers has no proper role. 221 F. Supp.
2d, at 414–415. And that is so, the court continued, even if the
defendant is also “making an expressive comment,” including
a parody of a different product. Id ., at 415. The defendant
is still “mak[ing] trademark use of another’s mark,” and must meet
an infringement claim on the usual battleground of “likelihood of
confusion.” Id. , at 416.

															That conclusion fits trademark law, and reflects
its primary mission. From its definition of “trademark” onward, the
Lanham Act views marks as source identifiers—as things that
function to “indicate the source” of goods, and so to “distinguish”
them from ones “manufactured or sold by others.” §1127; see supra , at 2–3. The cardinal sin under the law, as described
earlier, is to undermine that function. See supra , at 3. It
is to confuse consumers about source—to make (some of ) them
think that one producer’s products are another’s. And that kind of
confusion is most likely to arise when someone uses another’s
trademark as a trademark—meaning, again, as a source
identifier—rather than for some other expressive function. To adapt
one of the cases noted above: Suppose a filmmaker uses a Louis
Vuitton suitcase to convey something about a character (he is the
kind of person who wants to be seen with the product but doesn’t
know how to pronounce its name). See supra , at 12. Now think
about a different scenario: A luggage manufacturer uses an
ever-so-slightly modified LV logo to make inroads in the suitcase
market. The greater likelihood of confusion inheres in the latter
use, because it is the one conveying information (or
misinformation) about who is responsible for a product. That kind
of use “implicate[s] the core concerns of trademark law” and
creates “the paradigmatic infringement case.” G. Dinwoodie & M.
Janis, Confusion Over Use: Contextualism in Trademark Law, 92 Iowa
L. Rev. 1597, 1636 (2007). So the Rogers test—which
offers an escape from the likelihood-of-confusion inquiry and a
shortcut to dismissal—has no proper application.[ 2 ]

															Nor does that result change because the use of a
mark has other expressive content— i.e. , because it conveys
some message on top of source. Here is where we most dramatically
part ways with the Ninth Circuit, which thought that because Bad
Spaniels “communicates a humorous message,” it is automatically
entitled to Rogers ’ protection. 953 F. 3d, at 1175
(internal quotation marks omitted). On that view, Rogers might take over much of the world. For trademarks are often
expressive, in any number of ways. Consider how one liqueur brand’s
trade dress (beyond identifying source) tells a story, with a
bottle in the shape of a friar’s habit connoting the product’s
olden monastic roots:

															Or take a band name that “not only identifies
the band but expresses a view about social issues.” Tam , 582
U. S., at 245 (opinion of Alito, J.) (discussing “The
Slants”). Or note how a mark can both function as a mark and have
parodic content—as the court found in the Hilfiger/Holedigger
litigation. See supra , at 13–14. The examples could go on
and on. As a leading treatise puts the point, the Ninth Circuit’s
expansion of Rogers “potentially encompasses just about
everything” because names, phrases, symbols, designs, and their
varied combinations often “contain some ‘expressive’ message”
unrelated to source. 6 McCarthy §31:144.50. That message may well
be relevant in assessing the likelihood of confusion between two
marks, as we address below. See infra , at 18–19. But few
cases would even get to the likelihood-of-confusion inquiry if all
expressive content triggered the Rogers filter. In that
event, the Rogers exception would become the general rule,
in conflict with courts’ longstanding view of trademark law.

															The Ninth Circuit was mistaken to believe that
the First Amendment demanded such a result . The court
thought that trademark law would otherwise “fail[ ] to account
for the full weight of the public’s interest in free expression.”
953 F. 3d, at 1174. But as the Mattel ( i.e. ,
Barbie) court noted, when a challenged trademark use functions as
“source-identifying,” trademark rights “play well with the First
Amendment”: “Whatever first amendment rights you may have in
calling the brew you make in your bathtub ‘Pepsi’ ” are
“outweighed by the buyer’s interest in not being fooled into buying
it.” 296 F. 3d, at 900. Or in less colorful terms: “[T]o the
extent a trademark is confusing” as to a product’s source “the law
can protect consumers and trademark owners.” Tam , 582
U. S., at 252 (Kennedy, J., concurring in part and concurring
in judgment); see Friedman v. Rogers , 440 U.S.
1 , 15 (1979) (rejecting a First Amendment challenge to a law
restricting trade names because of the “substantial” interest in
“protecting the public from [their] deceptive and misleading use”).
Or yet again, in an especially clear rendering: “[T]he trademark
law generally prevails over the First Amendment” when “another’s
trademark (or a confusingly similar mark) is used without
permission” as a means of “source identification.” Yankee
Publishing Inc. v. News Am. Publishing Inc. , 809 F. Supp. 267 , 276 (SDNY 1992) (Leval, J.) (emphasis
deleted). So for those uses, the First Amendment does not demand a
threshold inquiry like the Rogers test. When a mark is used
as a mark (except, potentially, in rare situations), the
likelihood-of-confusion inquiry does enough work to account for the
interest in free expression.

															B

															Here, the District Court correctly held that
“VIP uses its Bad Spaniels trademark and trade dress as source
identifiers of its dog toy.” See App. to Pet. for Cert. 105a. In
fact, VIP conceded that point below. In its complaint, VIP alleged
that it both “own[s] and “use[s]” the “ ‘Bad Spaniels’
trademark and trade dress for its durable rubber squeaky novelty
dog toy.” App. 3, 11. The company thus represented in this very
suit that the mark and dress, although not registered, are used to
“identify and distinguish [VIP’s] goods” and to “indicate [their]
source.” §1127. (Registration of marks, you’ll recall, is optional.
See supra , at 3–4.)

															In this Court, VIP says the complaint was a mere
“form allegation”—a matter of “rote.” Tr. of Oral Arg. 73. But even
if we knew what that meant, VIP has said and done more in the same
direction. First, there is the way the product is marketed. On the
hangtag, the Bad Spaniels logo sits opposite the concededly
trademarked Silly Squeakers logo, with both appearing to serve the
same source-identifying function. See supra , at 7. And
second, there is VIP’s practice as to other products in the Silly
Squeakers line. The company has consistently argued in court that
it owns, though has never registered, the trademark and trade dress
in dog toys like “Jose Perro” (cf. Jose Cuervo) and
“HeinieSniff ’n” (cf. Heineken).[ 3 ] And it has chosen to register the names of still other
dog toys, including Dos Perros (#6176781), Smella Arpaw (#6262975),
and Doggie Walker (#6213816). See supra , at 6. Put all that
together, and more than “form” or “rote” emerges: VIP’s conduct is
its own admission that it is using the Bad Spaniels (née Jack
Daniel’s) trademarks as trademarks, to identify product source.

															Because that is so, the only question in this
suit going forward is whether the Bad Spaniels marks are likely to
cause confusion. There is no threshold test working to kick out all
cases involving “expressive works.” But a trademark’s expressive
message—particularly a parodic one, as VIP asserts—may properly
figure in assessing the likelihood of confusion. See, e.g. , Louis Vuitton Malletier S. A. v. Haute Diggity Dog,
LLC , 507 F.3d 252, 265 (CA4 2007) (Parody “influences the way
in which the [likelihood-of-confusion] factors are applied”); Brief
for United States as Amicus Curiae 17–22 (same). A parody
must “conjure up” “enough of [an] original to make the object of
its critical wit recognizable.” Campbell v. Acuff-Rose
Music, Inc. , 510 U.S.
569 , 588 (1994) (internal quotation marks omitted). Yet to
succeed, the parody must also create contrasts, so that its message
of ridicule or pointed humor comes clear. And once that is done
( if that is done), a parody is not often likely to create
confusion. Self-deprecation is one thing; self-mockery far less
ordinary. So although VIP’s effort to ridicule Jack Daniel’s does
not justify use of the Rogers test, it may make a difference
in the standard trademark analysis. Consistent with our ordinary
practice, we remand that issue to the courts below. See Cutter v. Wilkinson , 544 U.S.
709 , 718, n. 7 (2005) (noting that this Court is generally “a
court of review, not of first view”).

															III

															Our second question, more easily dispatched,
concerns Jack Daniel’s claim of dilution by tarnishment (for the
linkage of its whiskey to less savory substances). Recall that the
Ninth Circuit dismissed that claim based on one of the Lanham Act’s
“[e]xclusions” from dilution liability—for “[a]ny noncommercial use
of a mark.” §1125(c)(3)(C); see supra , at 9. On the court’s
view, the “use of a mark may be ‘noncommercial’ even if used to
sell a product.” 953 F. 3d, at 1176 (internal quotation marks
omitted). And VIP’s use is so, the court continued, because it
“parodies” and “convey[s] a humorous message” about Jack Daniel’s. Id. , at 1175–1176. We need not express a view on the first
step of that reasoning because we think the second step wrong.
However wide the scope of the “noncommercial use” exclusion, it
cannot include, as the Ninth Circuit thought, every parody or
humorous commentary.

															To begin to see why, consider the scope of
another of the Lanham Act’s exclusions—this one for “[a]ny fair
use.” As described earlier, the “fair use” exclusion specifically
covers uses “parodying, criticizing, or commenting upon” a famous
mark owner. §1125(c)(3)(A)(ii); see supra , at 5. But not in
every circumstance. Critically, the fair-use exclusion has its own
exclusion: It does not apply when the use is “as a designation of
source for the person’s own goods or services.” §1125(c)(3)(A). In
that event, no parody, criticism, or commentary will rescue the
alleged dilutor. It will be subject to liability regardless.

															The problem with the Ninth Circuit’s approach is
that it reverses that statutorily directed result, as this case
illustrates. Given the fair-use provision’s carve-out, parody (and
criticism and commentary, humorous or otherwise) is exempt from
liability only if not used to designate source. Whereas on
the Ninth Circuit’s view, parody (and so forth) is exempt
always—regardless whether it designates source. The expansive view
of the “noncommercial use” exclusion effectively nullifies
Congress’s express limit on the fair-use exclusion for parody, etc.
Just consider how the Ninth Circuit’s construction played out here.
The District Court had rightly concluded that because VIP used the
challenged marks as source identifiers, it could not benefit from
the fair-use exclusion for parody. See App. to Pet. for Cert. 105a; supra , at 8–9, 17–18. The Ninth Circuit took no issue with
that ruling. But it shielded VIP’s parodic uses anyway. In doing
so, the court negated Congress’s judgment about when—and when
not—parody (and criticism and commentary) is excluded from dilution
liability.

															IV

															Today’s opinion is narrow. We do not decide
whether the Rogers test is ever appropriate, or how far the
“noncommercial use” exclusion goes. On infringement, we hold only
that Rogers does not apply when the challenged use of a mark
is as a mark. On dilution, we hold only that the noncommercial
exclusion does not shield parody or other commentary when its use
of a mark is similarly source-identifying. It is no coincidence
that both our holdings turn on whether the use of a mark is serving
a source-designation function. The Lanham Act makes that fact
crucial, in its effort to ensure that consumers can tell where
goods come from.

															For the reasons stated, we vacate the judgment
below and remand for further proceedings consistent with this
opinion.

															It is so ordered. Notes 1 To be clear, when we
refer to “the Rogers threshold test,” we mean any threshold
First Amendment filter. 2 That is not to say (far
from it) that every infringement case involving a
source-identifying use requires full-scale litigation. Some of
those uses will not present any plausible likelihood of
confusion—because of dissimilarity in the marks or various
contextual considerations. And if, in a given case, a plaintiff
fails to plausibly allege a likelihood of confusion, the district
court should dismiss the complaint under Federal Rule of Civil
Procedure 12(b)(6). See 6 McCarthy §32:121.75 (providing
examples). 3 See, e.g. , VIP
Products, LLC v. Tequila Cuervo La Rojena, S. A. de
C. V. , No. 20–cv–0319 (D Ariz., Feb. 11, 2020), ECF Doc.
1, p. 3 (“Jose Perro”); VIP Products, LLC v. Heineken
USA, Inc. , No. 13–cv–0319 (D Ariz., Feb. 13, 2013), ECF Doc. 1,
pp. 3–4 (“HeinieSniff ’n”); VIP Products, LLC v. Pabst Brewing Co. , No. 14–cv–2084 (D Ariz., Sept. 19, 2014),
ECF Doc. 1, pp. 3–4 (“Blue Cats Trippin”) (cf. Pabst Blue
Ribbon); VIP Products, LLC v. Champagne Louis Roederer,
S. A. , No. 13–cv–2365 (D Ariz., Nov. 18, 2013), ECF Doc. 1, pp.
3–4 (“Crispaw”) (cf. Cristal). SUPREME COURT OF THE UNITED STATES

															_________________

															No. 22–148

															_________________

															JACK DANIEL’S PROPERTIES, INC., PETITIONER v. VIP PRODUCTS LLC

															on writ of certiorari to the united states
court of appeals for the ninth circuit

															[June 8, 2023]

															Justice Sotomayor, with whom Justice Alito
joins, concurring.

															I join the Court’s opinion in full. I write
separately to emphasize that in the context of parodies and
potentially other uses implicating First Amendment concerns, courts
should treat the results of surveys with particular caution. As
petitioner did here, plaintiffs in trademark infringement cases
often commission surveys that purport to show that consumers are
likely to be confused by an allegedly infringing product. Like any
other evidence, surveys should be understood as merely one piece of
the multifaceted likelihood of confusion analysis. See, e.g. , Uncommon, LLC v. Spigen, Inc. , 926 F.3d
409, 425 (CA7 2019). Courts should also carefully assess the
methodology and representativeness of surveys, as many lower courts
already do. See, e.g. , Water Pik, Inc. v. Med-Systems, Inc. , 726 F.3d 1136, 1144–1150 (CA10
2013); Starbucks Corp. v. Wolfe’s Borough Coffee,
Inc. , 588 F.3d 97, 117 (CA2 2009).

															When an alleged trademark infringement involves
a parody, however, there is particular risk in giving uncritical or
undue weight to surveys. Survey answers may reflect a mistaken
belief among some survey respondents that all parodies require
permission from the owner of the parodied mark. Some of the answers
to the survey in this case illustrate this potential. See App.
81–82, n. 25 (“ ‘I’m sure the dog toy company that made
this toy had to get [Jack Daniel’s] permission and legal rights to
essentially copy the[ir] product in dog toy form’ ”); ibid. (“ ‘The bottle is mimicked after the Jack Daniel
BBQ sauce. So they would hold the patent therefore you would have
to ask permission to use the image’ ”); see also Anheuser-Busch, Inc. v. Balducci Publications , 28 F.3d 769 , 772–773, 775 (CA8 1994) (describing a similar
situation). Plaintiffs can point to this misunderstanding of the
legal framework as evidence of consumer confusion. Cleverly
designed surveys could also prompt such confusion by making
consumers think about complex legal questions around permission
that would not have arisen organically out in the world.

															Allowing such survey results to drive the
infringement analysis would risk silencing a great many parodies,
even ones that by other metrics are unlikely to result in the
confusion about sourcing that is the core concern of the Lanham
Act. See ante , at 4, 10, 14. Well-heeled brands with the
resources to commission surveys would be handed an effective veto
over mockery. After all, “[n]o one likes to be the butt of a joke,
not even a trademark.” 6 J. McCarthy, Trademarks and Unfair
Competition §31:153 (5th ed. 2023). This would upset the Lanham
Act’s careful balancing of “the needs of merchants for
identification as the provider of goods with the needs of society
for free communication and discussion.” P. Leval, Trademark:
Champion of Free Speech, 27 Colum. J. L. & Arts 187, 210
(2004). Courts should thus ensure surveys do not completely
displace other likelihood-of-confusion factors, which may more
accurately track the experiences of actual consumers in the
marketplace. Courts should also be attentive to ways in which
surveys may artificially prompt such confusion about the law or
fail to sufficiently control for it. SUPREME COURT OF THE UNITED STATES

															_________________

															No. 22–148

															_________________

															JACK DANIEL’S PROPERTIES, INC., PETITIONER v. VIP PRODUCTS LLC

															on writ of certiorari to the united states
court of appeals for the ninth circuit

															[June 8, 2023]

															Justice Gorsuch, with whom Justice Thomas and
Justice Barrett join, concurring.

															I am pleased to join the Court’s opinion. I
write separately only to underscore that lower courts should handle Rogers v. Grimaldi , 875 F.2d 994 (CA2 1989), with
care. Today, the Court rightly concludes that, even taken on its
own terms, Rogers does not apply to cases like the one
before us. But in doing so, we necessarily leave much about Rogers unaddressed. For example, it is not entirely clear
where the Rogers test comes from—is it commanded by the
First Amendment, or is it merely gloss on the Lanham Act, perhaps
inspired by constitutional-avoidance doctrine? Id. , at 998.
For another thing, it is not obvious that Rogers is correct
in all its particulars—certainly, the Solicitor General raises
serious questions about the decision. See Brief for United States
as Amicus Curiae 23–28. All this remains for resolution
another day, ante , at 13, and lower courts should be attuned
to that fact.