I. Introduction: Walking a Fine Line

Money talks, especially in the ravenous environment of the U.S. economy.[1] Thus, what drives consumer spending—and what consumers expect—is incredibly important. Trademarks are one such driver.[2] Nearly six in ten consumers worldwide express a preference for sticking to brands they know, even when the brand dabbles in producing a new product.[3] When dealing with brands, consumers should be able to expect freedom of choice but not anarchy. Innovation but not exploitation. Security but not blanket protection. Walking these fine lines presents an extremely difficult problem for trademark law.[4] And the rise in registration and value of brands have only added to the problem.[5] To illustrate, 92,608 trademark applications were filed from December 2019 to December 2020 alone—an increase of 172% over the previous year.[6] While such a rise in trademark registrations has many benefits,[7] it also comes with the hefty concern of limiting the public’s freedom of expression.[8] The public has an important interest in being able to discuss, portray, comment on, criticize, and make fun of brands without fear of repercussions.[9] But simultaneously, brands require protection to provide the public with all the benefits they desire.

This Note examines how to appropriately balance the importance of protecting both trademarks and freedom of expression. In doing so, it focuses on when trademark use implicates sufficient First Amendment concerns and, thus, when the court should step in to safeguard the use. Shifting the focus from what the exploitation of a brand is to the reason for the exploitation notifies the court when to walk the fine line intersecting these two interests and when to get down from the tightrope. When freedom of expression is not used to ensure an individual’s expression but instead to exploit it, it should not be awarded blanket protection under the First Amendment.

Part II begins by providing the relevant doctrinal background for the intersection between trademark law and the First Amendment. Part II then delves into the factual and procedural background of VIP Products v. Jack Daniel’s before concluding with a description of the Ninth Circuit’s analysis in deciding the case. Part III defines the problem left in the aftermath of the Ninth Circuit’s decision—which is essentially unlimited First Amendment shielding of so-called expressive works. Part IV provides a solution to this problem by proposing to separate the analysis based on whether the use of a trademark classifies as commercial or noncommercial. Part V details an example of the framework’s application by using the facts of the Jack Daniel’s case. Part VI concludes this Note.

II. VIP Products v. Jack Daniel’s: The Last Straw

A. Doctrinal Background

A trademark is a right given to “a particular word, phrase, or symbol” used in trade.[10] This right falls into the category of “intellectual property” rights.[11] The term intellectual property supplies a charming way to refer to property that stems from the mind, and it also includes copyrights and patents.[12] But despite the whimsical nature of this term, these rights still ultimately concern property, even if the property is intangible.[13] And property, in any form, is relative.[14] This relativity means that property law cannot operate in generalities but instead must look to the right balance of interests for each particular situation.[15] For trademarks specifically, the intricacies help to determine when to employ the quintessential right of trademarks: the right to exclude.[16]

Even though copyrights, patents, and trademarks are all considered intellectual property, they are each afforded different legal protection.[17] However, they all face the difficult task of “promoting economic activity” while simultaneously “preventing its suffocation.”[18] For trademarks, this task is tackled by the Lanham Act, which supplies trademark holders with a cause of action—trademark infringement—for unauthorized use of their mark.[19] Under the Lanham Act, a trademark holder asserting trademark infringement must satisfy the likelihood of confusion test.[20] This test requires the trademark holder to prove that the defendant’s use of the mark is likely to cause confusion about the origin, sponsorship, or approval of a good.[21] By hinging on confusion, the test was designed to appropriately balance the rights of the trademark holder with the interest of the public in freedom of expression, which is safeguarded by the First Amendment.[22] Courts apply the test by examining the Sleekcraft factors; a list of inexhaustive red flags that can indicate likely confusion.[23] If the factors signal confusion, then the court will likely find infringement and prevent the use of the trademark.[24]

But this analysis becomes more complicated when the public has an enhanced interest in freedom of expression.[25] In these situations, courts have expressed concern that the traditional likelihood of confusion test will fail to maintain the adequate balance of rights.[26] To combat this concern, the Second Circuit created the Rogers test.[27] The Rogers test affords any work deemed an “expressive work” heightened First Amendment protection.[28] Under this test, the trademark holder must prove both likelihood of confusion and that the defendant’s use of the mark either (1) is not artistically relevant to the underlying work;[29] or (2) “explicitly misleads [consumers] as to the source or content of the work.”[30] In laying down this framework, though, the Second Circuit failed to specify what qualifies as an expressive work.[31] Due to this ambiguity in application, only a handful of sister circuit courts have adopted the Rogers test.[32] The Ninth Circuit—the court that decided the central case of this Note—has used this test since 2002[33] but recently has further complicated its application.[34]

B. Factual and Procedural Background

The Ninth Circuit case VIP Products LLC v. Jack Daniel’s Properties, Inc. is between seemingly unlikely competitors: a whiskey giant and a dog toy manufacturer.[35] The whiskey giant, Jack Daniel’s, has sold products in the United States since 1875.[36] Further, its whiskey has been the best-selling whiskey since 1997, with over seventy-five million cases sold through April 2015.[37] In comparison, the dog toy manufacturer, VIP Products, has designed and sold its Silly Squeakers line of dog chew toys since only the mid-2000s.[38] Additionally, many of VIP Products’s designs have borrowed ideas from other major brands, including Stella Artois, Heineken, Guinness, and Mountain Dew.[39] In 2008, a court held VIP Products accountable for this “borrowing” of ideas by ordering them to stop selling its Buttwiper dog toy, which was modeled off of Anheuser-Busch’s Budweiser beer.[40]

In this case, VIP Products conducted this “borrowing” from Jack Daniel’s Tennessee Sour Mash Whiskey bottle.[41] Regardless of whether this was done in reverence to the brand or simply for social commentary,[42] VIP Products created a dog toy spoofing this bottle without obtaining a license from Jack Daniel’s.[43] The problem with this “borrowing” is that, similar to the Budweiser beer, the Jack Daniel’s bottle contains a few of Jack Daniel’s largest trademarks.[44] These trademarks are the “Jack Daniel’s” trademark itself, the “Old No. 7” trademark, and the square-shaped bottle configuration.[45] Jack Daniel’s does actively license these trademarks, but it does so “carefully” to maintain the reputation of its brand.[46]

The dog toy created from VIP Products’s “borrowing” was cleverly titled “Bad Spaniels” and bore the same design and style as the Jack Daniel’s whiskey bottle.[47] This design included the same shape, same writing in white lettering on a black background, same font styles, and a slight tweak of the “Old No. 7 Brand” marking to a whimsical “Old No. 2, on your Tennessee Carpet.”[48] Despite these similarities, VIP adamantly pointed to the disclaimer included on the back of the toy.[49] This disclaimer recited, “This product is not affiliated with Jack Daniel’s.”[50] A comparison of the whiskey bottle to the dog toy is presented below.[51]


Following normal protocol when trademark infringement is suspected,[52] Jack Daniel’s sent VIP Products a cease-and-desist letter after becoming aware of the dog toy.[53] In this letter, Jack Daniel’s mentioned its trademarks and advised VIP Products to immediately stop sales.[54] VIP Products responded by bringing an action against Jack Daniel’s in district court.[55] In this action, VIP Products asked the court to declare that its dog toy did not infringe upon Jack Daniel’s trademarks.[56] Jack Daniel’s refused to go down without a fight and filed a counterclaim for trademark infringement under the Lanham Act.[57] VIP Products, hoping to escape the beast of its own creation, moved for summary judgment by asserting First Amendment protection.[58] The district court resolved the motion in favor of Jack Daniel’s, finding that the dog toy did not deserve such protection.[59] To resolve the dispute, the court simply applied the traditional likelihood of confusion test.[60] To determine if this test was met, the court primarily looked to Jack Daniel’s expert’s double-blind survey results.[61] These results indicated that 29% of those surveyed believed the dog toy to have been either made, sponsored, or approved by Jack Daniel’s.[62] Based on this percentage, the court found that a likelihood of confusion existed and ordered VIP Products to stop selling the Bad Spaniel’s dog toy.[63]

C. The Ninth Circuit’s Analysis

VIP Products appealed the district court’s ruling to the Ninth Circuit.[64] On appeal, the Ninth Circuit disagreed with the district court and ruled in favor of VIP Products.[65] In doing so, the court classified the dog toy as an expressive work deserving First Amendment protection.[66] The court began by defining what counts as an “expressive work,” claiming that it does not need to be the “equal of Anna Karenina or Citizen Kane” or even show great “creative artistry.”[67] Instead, an expressive work is merely one that is “communicating ideas or expressing points of view.”[68] The court found that the dog toy’s humorous message satisfied this requirement.[69] Additionally, the court pointed to Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC (where the use of parody was successful in fending off a claim of trademark infringement) to deem the dog toy a successful parody requiring protection.[70] Because it classified the dog toy as an expressive work, the court ruled that the dog toy should be analyzed under the Rogers test of heightened First Amendment protection.[71] After making this classification, the court bumped the case back down to the district court for review under this test.[72]Naturally, Jack Daniel’s was not pleased with how the Ninth Circuit proposed that the interests be weighed and decided to file a petition for a writ of certiorari to the Supreme Court before the remand.[73] Jack Daniel’s took issue with the court’s decision to analyze the case under the Rogers test of heightened First Amendment protection rather than under the traditional likelihood of confusion test.[74] While the whiskey mogul does agree that a humorous message is relevant to whether confusion has occurred, it does not view such a message as warranting the application of a separate, more rigorous test.[75] Jack Daniel’s asserts that the likelihood of confusion test alone is satisfactory to protect the freedom of expression inherent in such a work.[76] Six circuit courts,[77] as well as the Trademark Trial and Appeal Board,[78] agree with Jack Daniel’s in this assertion and refuse to apply the Rogers test.[79] Further, Jack Daniel’s argues that a humorous message will not often lead to likely confusion anyway because the parody is usually so apparent that no consumer would reasonably experience confusion.[80]

Jack Daniel’s also took the opportunity in the writ to outline the potential consequences of allowing the reach of the Rogers test to become so pervasive.[81] These consequences include forum shopping[82] and an abdication of the main tenets of the Lanham Act.[83] In spite of Jack Daniel’s explanations that the case was ripe for review and the issues involved were outcome-determinative,[84] the Supreme Court chose to deny certiorari.[85]

On remand, because the Ninth Circuit provided the district court with a clear indication of its perspective on the issues, the district court was boxed in. After all, the Ninth Circuit found the dog toy’s message to be “humorous,” “silly,” and “word play to alter the serious phrase that appears on a Jack Daniel’s bottle.”[86] These descriptors show that the Ninth Circuit would prefer to give greater weight to the public’s interest in the dog toy’s message than to Jack Daniel’s interest in its trademarks. And the district court abided by the Ninth Circuit’s direction[87] while making it apparent that it did not agree.[88]

Refusing to succumb to the pressure, Jack Daniel’s appealed again. As expected, the Ninth Circuit simply affirmed the district court’s opinion—as it essentially authored the opinion anyway—with no additional comment.[89] But, unexpectedly, Jack Daniel’s tried again for Supreme Court review. This time, the Supreme Court granted Jack Daniel’s petition for certiorari on November 21, 2022, and oral arguments were presented on March 22, 2023.[90]

III. The Loophole Problem: An Infringer’s Wildest Dream

It takes two to tango. This commonly used idiom applies equally to dance as to the sale of a trademarked good. During a sale there are two main parties—the producer and the consumer.[91] With the new court-created loophole for expressive works, an infringer can directly copy a trademark without fear of liability.[92] Further, when constructing this loophole, the court failed to clarify when and how it should be used.[93] This clarification is important because the First Amendment does not ratify the granting of a sweeping “license to infringe.”[94] Yet, this is essentially what the court has endorsed by failing to delineate the necessary limits on the loophole’s application. Without such limits, the loophole will work against what trademarks were created to accomplish: providing accurate information to the market and then letting the market decide.[95] With this workaround available for infringers, trademarks cannot effectively optimize the flow of commerce.[96]

From consumers’ perspective, this loophole disrupts their natural reliance on trademarks when examining products and making purchases.[97] Nowadays, this reliance is about so much more than just source identification and economic efficiency.[98] It provides a medium for the consumer and the producer to interact[99] as well as a way for the consumer to communicate with the rest of society at large.[100] A purchase does not just reveal what a consumer wants to buy but what they want to express, encourage, and change.[101] This disruption, then, actually harms the ability of consumers to freely express themselves under the guise of protecting that exact interest.[102] Consumers can no longer make an informed choice on what they say through and expect from their products.[103]

From producers’ perspective, the loophole diminishes their desire to foster a prosperous brand because it disrupts their ability to “craft a consistent and often repeated brand message.”[104] Such a disruption removes the brand’s incentive to continually improve both in the present and in the future.[105] This reality is especially true amidst the mass dissemination of information stemming from the growth of social media.[106] Because the normal channel of communication between the consumer and producer has been severed, this again results in harm to consumers’ ability to freely express themselves.[107]

The court’s role is to allow the free market to regulate itself while simply stepping in to provide the needed protection of brands when necessary.[108] Instead, through this loophole, the court is reserving for itself the task of deciding what works are funny, clever, or harmless enough to continue without sanctioned punishment.[109] In doing so, the court is disregarding its impact on the overarching system of commerce—suppression of free-flowing communication between consumers and producers.[110] While the Ninth Circuit’s intent to protect the public’s freedom of expression was admirable, its decision to turn to the Rogers test to do so was not. The Rogers test, though useful in its limited application, will offer an easy way out for infringers if widely applied in the way the Ninth Circuit did in this case.

IV. The Solution: A Fork in the Road

Due to the complexities associated with modern commerce[111] and the previously discussed inherent downfalls of a broad application of the Rogers test,[112] a new trademark infringement framework must be adopted. This Note proposes a framework influenced both by the Lanham Act and the innate purposes of trademark law. The key to this framework is that it focuses not just on what is being done by an alleged infringer but why it is being done: setting standards rather than rules.[113]

The suggested framework begins by taking a broad view of the “use[d] in commerce” requirement of the Lanham Act.[114] Under this view, the Act merely requires a market player to make a single sale before they will be exposed to regulation.[115] This will lead to essentially all market players falling under the Act’s purview. Then, to determine if liability should be imposed, the framework turns to the innate purpose of trademark law—the promotion of commerce.[116] This innate purpose requires a differentiation based on the reason the market player is using the trademark—whether commercially or noncommercially. Unlike patent and copyright, which both aim to add creativity to the world and thus face a high burden to avoid stifling such expression, trademarks simply aim for transparency in commerce, lessening the worry of limiting creation.[117] This will ensure that a use is only prevented when it implicates the reasons trademark law was implemented in the first place.

As an example, a use of the trademarked Batman logo could result in the framework either calling for liability or no liability. To demonstrate, imagine two distinctive uses: (1) a character in a movie is wearing a Batman costume for Halloween; and (2) a costume company is selling a Batman costume. In both situations, the Lanham Act will apply once a single sale has been made. However, the innate purposes of trademark law will not be implicated and thus result in liability in both situations. On a simplified level,[118] the first example is a noncommercial product that should not face liability, while the second example is a commercial product that should face liability. The reasons for this distinction will be discussed throughout the rest of this Note.

A. The Lanham Act: What’s in a “Use”?

The first step to establish a cause of action for trademark infringement under the Lanham Act, and therefore the first step of the framework proposed by this Note, is showing that a trademark holder’s mark has been “use[d] in commerce” by an alleged infringer.[119] Unfortunately, the Act does not give much information as to what qualifies as “commerce.”[120] It merely defines the term as “all commerce which may lawfully be regulated by Congress.”[121] By this explicit reference to commerce, it appears that the drafters intended to place the regulation of trademark law plainly within the Commerce Clause.[122] Even so, this constitutional basis does not reign in what “commerce” is much further, as the Commerce Clause is notorious for its wide sweep.[123] It has been held to apply not only to interstate transactions themselves[124] but also to transactions that have “a substantial economic effect on interstate commerce.”[125] On a very simple level, all that the Commerce Clause demands in regards to the Lanham Act is a singular[126] sale.[127]

Idealistically, this requirement would allow pure social commentary and artistic works to sneak by the Act’s regulation unscathed. This is because these productions are not created to be offered for even a single sale but instead to be widely available to the public for purposes of knowledge and entertainment. However, while this utopian view may be nice in theory, in practice it is a bit more complicated. In the modern age, pure expressive works are few and far between.[128] People now create to sell, even when creating social commentary or artistic works.[129] Because of this, this Note will simplify the discussion by classifying uses as mostly commercial (commercial) or mostly noncommercial (noncommercial). Take a satirical book, for example. Though the author may have written the book to spread awareness of the troubles of society, it is unlikely that they would refuse to sell the book and turn a profit in the process. It is clear to see, then, that most works will qualify under the Act because all a work must do is be sold at least once; the nature of the work is immaterial.[130]

B. The Differentiation: Commercial Use Defined

Even though all sales will fall under the Act’s purview based on this broad view of the used-in-commerce requirement, not all sales should be punished. By differentiating sales based on whether they are commercial or noncommercial uses of a trademark, the court will quickly and easily be able to determine whether an alleged infringer should be held accountable or not. The innate purpose of trademark law will be used to draw this differentiation—yielding less protection for commercial use and more for noncommercial use. Before discussing how the innate purpose draws such a distinction between commercial and noncommercial uses, the distinction itself will first be discussed.

A commercial use should be defined as the use of a trademark either for (a) profit or (b) market advantage. This definition comes from the test for an injunction: the most commonly sought remedy for use of another’s intellectual property.[131] This test includes four factors: (1) irreparable injury; (2) remedies available at law inadequate to compensate the injury; (3) balance of hardships favor remedy in equity; and (4) no disservice of the public interest.[132] All of these factors point to the reason a commercial use[133] should be prevented—free riding.[134] Free riding occurs when someone “capitalize[s] off of the good will of a well-known brand.”[135] Through this capitalization, the infringer gains unjust enrichment at the expense of the producer.[136] Unjust enrichment may come directly (recognition by consumers of the trademark resulting in a positive association—e.g., purchasing a costume with the Batman logo due to an affinity for Batman) or indirectly (false assumption that the trademark holder endorses the product—e.g., purchasing a costume with a Batman logo due to belief that the Batman enterprise produced the costume).[137]

For the use to satisfy (a) profit, it must be made primarily to secure financial gain. This is designed to be a narrow category that captures only those works that are clearly commercial. Courts need not look into the specific intent of the alleged infringer in each case but instead will be provided with categories that meet (a) and those that do not. Because most everything can secure financial gain in modern times, the focus will be on the primary catalyst for the use. The paradigm examples for this category are the sales and advertising[138] of goods or services. In these situations, it is apparent that the infringer is using the trademark for their own commercial gain. This can apply whether the infringer is offering goods or services in an industry that competes with the trademark holder, either directly or indirectly, or in one that does not. Conversely, works that have an expressive component, meaning they communicate ideas or express points of view, would not satisfy this category.[139] The expressive component may come in the form of criticism, commentary, reporting, teaching, scholarship, or research.[140] This would include parodies, satires, editorials, and similar works.[141] These works’ primary catalyst is not financial gain, though such gain may be more than welcome by the creator.[142]

As there may be commercially driven actions that do not fall under (a) because the financial gain arises only incidentally, (b) market advantage provides an important expansion for the definition of a commercial use. A market advantage may arise from the alleged infringer getting a foothold in the market, the producer losing a foothold in the market, or both.[143] Such a change is undesirable in any market but especially undesirable for the U.S. economy.[144] The U.S. economy has already exhibited signs of market concentration, so any less competition now will only exacerbate the current symptoms.[145] These symptoms include higher prices, lower quality of goods, less variety, and less innovation.[146] It has been shown that a common way start-ups combat this concentration is by registering trademarks and thereby creating brands.[147] The two major signs of gaining a foothold are higher prices and consolidation.[148] Losing a foothold, on the other hand, encompasses any financial injury, such as potential lost fees and the possibility of a ripple effect on business or sales.[149] This category focuses more on the impact on the market when infringers do not pay the customary price.[150] Due to this, it has the possibility to include parody, satire, editorials, and similar works if they go too far in grasping the market.[151] For parodies in particular, as VIP claims that this dog toy is, if the parody is unsuccessful, meaning it does not comment on the original work itself but instead uses the original work to boost its popularity, this is too much of a grasp of the market.[152]

If a work is outside the purview of (a) and does not sufficiently grasp the market to satisfy (b), it will be deemed a noncommercial use. This will then impact the rest of the court’s analysis of the work.

C. Going Forward: The Rest of the Framework

If a product is deemed to be a commercial use, the analysis falls squarely within the Lanham Act and the court should continue as it always has, by employing the likelihood of confusion test. For a commercial use, there are limited First Amendment concerns at play.[153] But, if a product is deemed to be a noncommercial use, First Amendment concerns may play a bigger role. In either case, though, fraud will abate any possible First Amendment concerns.[154] To protect such freedom of expression, a noncommercial product should be afforded a presumption of artistic relevance when conducting the likelihood of confusion test.[155] This presumption will act against a finding for confusion absent clear evidence to the contrary. The classification of a use as commercial or noncommercial, though, does not end the analysis; the rest of the framework still provides an opportunity for the alleged infringer to avoid liability—even if not granted the increase in protection afforded to a noncommercial work.

For a commercial work, the infringer has a way out if their product does not confuse consumers under the likelihood of confusion test. Therefore, even if an expressive work falls under (b) and is commercial, if it is truly expressive it will not deceive consumers into believing that it is either supplied by or endorsed by the trademark holder.[156] Unlike copyrights and patents, trademarks do not give their holders monopoly power; the trademark right is limited by consumers.[157] Consumers are more savvy than courts may think, leading confusion to exist really only in regard to big-name trademarks.[158] This absolves the concern that artists and small businesses will be on the hook for giant legal fees, because consumers are, more often than not, aware that these works are not the product of the trademark holder.[159] Many big-name trademarks also engage in comprehensive licensing that smaller names can turn to if they are worried that confusion may exist.[160] Licensing is an advantageous option, because it extends awareness of the brand while allowing control over the agreement.[161] This ensures that the licensee adheres to all of the core values of the brand when engaging in commerce.[162]

For a noncommercial work, the trademark holder may still rebut the presumption of artistic relevance by satisfying either prong of the Rogers test.[163] If they are successful in their rebuttal, therefore diminishing the relevance of the First Amendment concerns, the work will come back under the traditional likelihood of confusion test. They may do so by showing either that there was no artistic reason for the trademark to have been used or that the trademark was employed to explicitly mislead consumers. In either case, the use of the trademark is past the point of mere expression and the infringer should be held liable. This is incredibly important, because the infringer will avoid all liability otherwise; noncommercial use cannot be held to dilute per the Lanham Act but only to infringe.[164] As a practical example, this is exactly what happened in American Family Life Insurance Co. v. Hagan.[165] The court found that Governor Taft’s campaign commercials featuring the character “TaftQuack”—modeled after the “Aflac Duck”—classified as noncommercial use and thus, were exempt from liability for dilution.[166]

Further, even if a use is deemed commercial and found to present a likelihood of confusion, the alleged infringer can still attempt to invoke a defense to liability.[167] One major defense available is fair use.[168] There are two types of fair use: descriptive and nominative.[169] Descriptive fair use applies when the alleged infringer solely used the trademark to describe their product, not to refer to the trademark holder’s product in any way.[170] This defense is limited, though, in that it requires that the infringer acted “in good faith.”[171] For nominative fair use, the trademark has to have been used because it is the sole way “to describe a particular thing.”[172] This defense is also limited in that while doing so, the infringer cannot disparage, lie, mislead, or confuse.[173] The limits on these defenses operate to prevent them from absolving all trademark protection. The defenses act as another balance between free speech and consumer or brand protection. Thus, even if found to be commercial, the infringer still has a second layer of protection to potentially turn to.

D. Policy Goal: Supplying Limits

As previously alluded to, the Lanham Act itself does not prescribe a differentiation between commercial and noncommercial use. The Lanham Act only requires a use to have a “‘connection with’ the sale, distribution, or advertising of ‘any goods or services.’”[174] This terminology indicates that the drafters intended for the Lanham Act to have a broad reach, regulating activities other than mere sale, distribution, and advertisement alone.[175] This also supports the reading of the Lanham Act that is adopted in this Note, which is that it applies to both commercial and noncommercial uses.[176] Yet, even though the Lanham Act hypothetically applies to both situations, in practicality it applies more often to commercial use due to the public’s comparatively lower interest in freedom of expression.[177] The inquiry then becomes: when is a “connection” commercial and when is it not?

Though the dichotomy between commercial and noncommercial use has been recognized by courts before, no firm lines have ever been drawn.[178] To explain why these firm lines must now be drawn, this Note emphasizes the policy goal of trademark law. As the foundation of trademark law lies within the Commerce Clause, its underlying policy goal is to promote commerce.[179] To do so, it uses two guideposts: (1) protect consumers from deception;[180] and (2) protect producers’ brand identity.[181] For commercial products, these two guideposts align for a simple application of the Lanham Act.[182] Contrarily, for noncommercial works these guideposts may support differing conclusions.[183] Ultimately, both guideposts are meant to protect the consumer, with protection of the producer being necessary collateral to do so; because the creation of trademark law was predicated on informed consumer choice, this is an important feature.[184]

As long as a consumer gets what they paid for, the first guidepost is met.[185] For commercial products, this plays a massive role, as consumers recognize and choose products based on confidence in the brand.[186] This confidence extends not only to the brand’s “high quality standards and consistency” but also to a developed fondness for the brand itself.[187] In response to mass dissemination of information, consumers may now pick and choose brands based on more intangible considerations.[188] Such considerations include donations to a certain charity, placing women in positions of power, or even a recommendation from a celebrity.[189] This incentivizes brands to both provide better products and maintain a better reputation.[190] However, when a noncommercial product is involved, a consumer’s expectations are drastically different. A consumer will likely recognize that they may not be satisfied or agree with every part of a noncommercial product and that possibility is actually part of the value of the product. Take the classic noncommercial product, a movie, for example: most consumers would never think to ask for a refund simply because the movie did not have the ending that they imagined it would. However, if a commercial product acted similarly by not conforming to expectations, a consumer would not only ask for a refund but may even sue.[191] This demonstrates that the concern of consumer deception is only present for those products deemed to be commercial in nature.

Under the second guidepost, by shielding brand identity, trademark law aims to hold producers accountable for their actions.[192] When a product is used for commercial gain, there are no conflicting considerations to be accounted for. The situation is simple: the producer should be responsible for their actions in exploiting the market.[193] But, when a noncommercial product is involved, punishing the producer seems more akin to strict liability solely for creation. Without understanding what they did wrong to result in liability, the producer will not be able to successfully change their conduct in the future. Moreover, a noncommercial product contains a level of social commentary or artistic expression that is personal to the producer. Due to this, it would be incredibly difficult for the court to even judge the value or quality of the product objectively and hold the producer accountable.[194] Similarly to the first guidepost, then, the second guidepost also indicates that protecting a producers’ brand identity is only feasible for those products deemed to be commercial in nature.

The takeaway from both guideposts is that trademark law should apply simply and strictly to commercial uses and embrace more caveats for noncommercial uses, which is the differentiation the framework proposed in this Note adopts. This is because noncommercial uses may not always implicate the behavior trademark law seeks to regulate.

V. Application: The Buck Stops Here

Now, to the good stuff: the application of the framework to the VIP Products v. Jack Daniel’s case. To start off, clearly the Lanham Act would apply to the action at issue: VIP Products’s sale of dog toys spoofing Jack Daniel’s. This is because all the “use[d] in commerce” requirement looks for is at least a single sale, which has unquestionably occurred. Before delving into whether this use is commercial or noncommercial, the policy goal of trademark law will again be discussed, but this time in regard to this case to see its real-life application. For the first guidepost, the consumer deception aspect is concerned with consumers believing the dog toys were affiliated with Jack Daniel’s and, therefore, expecting a certain level of quality or even purchasing solely based on this reason. The second guidepost is focused on the brand identity that has been cultivated by Jack Daniel’s over time. If this cultivation is not respected, there is concern that Jack Daniel’s will abandon its mission to provide quality products and commerce will be worse off for it.

Despite the previous discussion, this case should have been an easy one for the court. It seems to be clear that VIP Products was itching to turn a profit and using the Jack Daniel’s brand to do so. Therefore, this product should satisfy (a) and be deemed a commercial use. The primary catalyst for the use of the Jack Daniel’s trademark appears to be financial gain from the sale of dog toys. It falls under the paradigm case of a sale of a good, and the court need not delve into VIP Products’s intent in making the product and using the trademark. However, the court may choose to accept VIP Products’s argument that the toy has an expressive component. If so, the product would not fall under (a) but still would be deemed a commercial use under (b). It is apparent that Jack Daniel’s is willing to license its trademarks and compete in the same industry. VIP Products cannot get away with exploitation of the market without paying its way.

Moving on, then, as the product is a commercial use, the traditional likelihood of confusion test will be applied. This test was initially applied by the district court with no apparent abuse of discretion; due to this, their decision finding a likelihood of confusion should be reinstated. VIP Products may attempt to invoke a fair use defense, but seeing as the use was not to describe the dog toy nor was it noninterchangeable, this seems unlikely to succeed. Overall, opening the flood gates here by allowing use of a trademark when the infringer’s “commentary” is “good” acts as court-sanctioned exploitation. This situation in particular would amount to such exploitation. The public has a very limited interest in receiving criticism of how “seriously” brands take themselves—especially when the criticism would harm a brand that society relies on to produce consistent and beloved products.[195] This case highlights the exact problem present in current trademark doctrine—no focus on the why, which was solely profit in this case. VIP Products’s bark (harm to the Jack Daniel’s brand itself, as well as any unwitting consumer who might experience confusion from the dog toy) was truly bigger than its bite (the alleged social commentary). And no one likes a yappy dog.

VI. Conclusion: Practical Protection

The oft-repeated assumption that consumers are gullible and ignorant does not do them justice.[196] Consumers are actually quite skeptical in their purchasing decisions. They realize the value of money and the luxury of having time left to spend it. If a brand wants to profit in this environment, it must not only meet product quality expectations but also community expectations. These community expectations may include donations to certain charities, engaging in political endorsements, or even full-fledged brand restructuring. To adequately meet all of consumers’ expectations, though, brands need a degree of insulation. This insulation will allow them to make necessary changes without being burned in the process by exploitation of their brand name. However, insulation does come with a fear of squashing the public’s freedom of expression. On the surface, it poses a large problem of silencing social commentary and artistic expression. But, this problem does not have to come to fruition. This Note develops a solution wherein the possibility of silencing is limited. It does so by separating the analysis for commercial and noncommercial uses of a trademark; it offers more insulation of brands for commercial use and more protection of the public’s freedom of expression for noncommercial use. In both situations, there remains a heavy fact-intensive look at the circumstances involved, including the suite of available defenses, to ensure the interests have been appropriately balanced. Through this lens, it is clear that VIP Products’s motive was to line their pockets, not to make the public (or seemingly the Ninth Circuit) laugh. Thus, their trademark infringement should not be allowed to persist, and the decision of the district court should be reinstated.

Olivia Wogon

  1. The U.S. economy feeds on consumer spending to survive, with personal consumption powering almost 70% of the market. Kimberly Amadeo, The US Economy and How It Works, Balance, https://www.thebalance.com/how-does-the-u-s-economy-work-4056835 [https://perma.cc/9W8R-MRWT] (Nov. 28, 2020).

  2. A trademark is essentially the protection of a brand by law; therefore, usually, the impetus of a brand lies in its trademark. See Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 Yale L.J. 1687, 1695, 1697 (1999) (“We give protection to trademarks for one basic reason: to enable the public to identify easily a particular product from a particular source.”).

  3. See M.T. Wroblewski, The Effect of a Brand on Consumer Behavior, Chron., https://smallbusiness.chron.com/effect-brand-consumer-behavior-61767.html [https://perma.cc/ZSD6-8FWQ] (Nov. 26, 2018).

  4. This difficulty has increased in response to social media becoming the twenty-first century equivalent of word-of-mouth advertising. Sam Malone, The Importance of Word-of-Mouth Marketing Through Social Media, Forbes (Dec. 7, 2020, 7:40 AM), https://www.forbes.com/sites/forbesbusinesscouncil/2020/12/07/the-importance-of-word-of-mouth-marketing-through-social-media/?sh=f532ed30a324 [https://perma.cc/5J86-PMB4]. As the average time spent on social media increased to sixty-five minutes this past year, up from fifty-four minutes in 2019 and fifty-six minutes in 2018, this form of information spread has a heavy hand in what consumers choose to purchase. S. Dixon, Social Media Use During COVID-19 Worldwide—Statistics & Facts, Statista (Feb. 8, 2022), https://www.statista.com/topics/7863/social-media-use-during-coronavirus-covid-19-worldwide/ [https://perma.cc/8HLC-X5BX].

  5. See David Gooder, What a Huge Surge in Trademark Filings Means for Applicants, USPTO (June 23, 2021), https://www.uspto.gov/blog/director/entry/what-a-huge-surge-in?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term= [https://perma.cc/2JZW-MNQY].

  6. Id.

  7. See Wroblewski, supra note 3. Such benefits include creating desire, communicating values, validating self-image, and establishing a sense of community. Id.

  8. See Lemley, supra note 2, at 1710–11.

  9. See id. at 1711–12.

  10. VIP Prods., LLC v. Jack Daniel’s Props., Inc., No. CV-14-2057-PHX-SMM, 2016 WL 5408313, at *3 (D. Ariz. Sept. 27, 2016) (quoting New Kids on the Block v. News Am. Publ’n, Inc., 971 F.2d 302, 306 (9th Cir. 1992)).

  11. Ross Housewright, Early Development of American Trademark Law 21 (2007) (M.I.M.S., Berkeley School of Information), https://www.ischool.berkeley.edu/sites/default/files/Ross Housewright TM Paper - FINAL.pdf [https://perma.cc/6Y4X-VFKB].

  12. See id.

  13. See id.

  14. Neil Meyer, Introduction to Property Rights: A Historical Perspective, U. Ill. Extension: Loc. Cmty. Res., https://web.extension.illinois.edu/lcr/propertyrights.cfm [https://perma.cc/5NPW-59HG] (“[P]roperty rights are not absolute but, instead, a function of what society is willing to acknowledge, defend, and enforce.”).

  15. See id.

  16. See Daniel J. Wright, Explicitly Explicit: The Rogers Test and the Ninth Circuit, 21 J. Intell. Prop. L. 193, 198 (2013) (noting that “markholders do not possess the unfettered right to determine how their marks are used,” but they do possess the right to prevent some uses).

  17. See Housewright, supra note 11, at 21–22. The constitutional bases for these different forms of property are the main reason for these differences. Copyright and patent law are tied to the Progress Clause, whereas trademark law finds its endorsement in the Commerce Clause. Kevin J. Hickey, Cong. Rsch. Serv., IF10986, Intellectual Property Law: A Brief Introduction tbl.1 (2022).

  18. Hannah Hall, Pooch Over Hooch: Why Parody Prevailed in VIP Products, LLC v. Jack Daniel’s Properties, Inc., J. Intell. Prop. L. Online (Nov. 27, 2020), https://jiplonline.com/2020/11/27/pooch-over-hooch-why-parody-prevailed-in-vip-products-llc-v-jack-daniels-properties-inc/ [https://perma.cc/XLK8-VWT4].

  19. 15 U.S.C. § 1125(a); see also Lemley, supra note 2, at 1687 n.2 (explaining that the Lanham Act is the controlling statute for trademark law).

  20. Dana Kramer, Note, Honey Badger Does Care About First Amendment Protections in Trademark Law, 84 Mo. L. Rev. 873, 880 (2019).

  21. 15 U.S.C. § 1125(a).

  22. See Kramer, supra note 20 (explaining that while this test might be “murky and pliable,” it still often “strikes a comfortable balance” between these two interests (quoting Mattel, Inc. v. MCA Recs., Inc., 296 F.3d 894, 900 (9th Cir. 2002))).

  23. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979). Some of the Sleekcraft factors are strength of the mark; similarity of the marks; evidence of actual confusion; type of goods and degree of care likely to be exercised by the purchaser; and marketing channels used. Id.

  24. Id. at 354.

  25. This is usually the case when a work has some artistic component rather than being solely a commercial product. See, e.g., Wright, supra note 16, at 201.

  26. See id. at 200 n.39.

  27. See Rogers v. Grimaldi, 875 F.2d 994, 998–1000 (2d. Cir. 1989) (noting that while First Amendment concerns should not automatically insulate works from liability under the Lanham Act, these concerns should play a part in the consideration).

  28. Kramer, supra note 20, at 881.

  29. Rogers, 875 F.2d at 999. The standard for artistic relevance is intentionally set extremely low. However, exploitation of a mark for popularity should not meet the measure, though the Ninth Circuit does not apply the test that way. Hermès Int’l v. Rothschild, No. 22-cv-384, 2022 WL 1564597, at *5 (S.D.N.Y. May 18, 2022) (musing that an intent to create a “tribute to Herm[è]s’ most famous handbag, the Birkin” might not qualify as artistically relevant). But cf. Dr. Seuss Enters., L.P. v. ComicMix LLC, 983 F.3d 443, 449, 462 (9th Cir. 2020) (finding that a book capitalizing on Dr. Seuss’s popularity “easily surpasses this low bar [of artistic relevance],” with no mention as to its exploitative character).

  30. Kramer, supra note 20, at 882. This prong is not consistently applied by the circuit courts. See, e.g., Hermès Int’l, 2022 WL 1564597, at *5 (highlighting the Second Circuit’s balancing of the likelihood of confusion and the public interest in determining explicit misleadingness); ComicMix LLC, 983 F.3d at 462 (classifying this prong as a high bar that requires some clear misstatement about the source of the work).

  31. Rogers, 875 F.2d at 1000. In vague terms, an expressive work is defined as a work that is “communicating ideas or expressing points of view.” VIP Prods. LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1174 (9th Cir. 2020) (quoting Mattel, Inc. v. MCA Recs., Inc., 296 F.3d 894, 900 (9th Cir. 2002)). But this test is overly broad in that it could essentially capture everything.

  32. At some point in time, the Fifth, Sixth, Ninth, and Eleventh Circuits have all applied the Rogers test. Wright, supra note 16, at 203.

  33. The Ninth Circuit decided Mattel, Inc. v. MCA Records, Inc. in 2002. Id. at 203 n.67.

  34. The Second Circuit placed limits on the Rogers test, namely that it would only apply to works of equivalent expression to the work present in Rogers itself, which was the title of a film. Id. at 203–04, n.68. Despite such limits, the Ninth Circuit, in the case discussed herein, stretched the test to cover a commercial product. Petition for Writ of Certiorari at 23, VIP Prods. LLC v. Jack Daniel’s Props., Inc., No. 20-365 (U.S. Sept. 15, 2020), 2020 WL 5632652.

  35. VIP Prods. LLC, 953 F.3d at 1172. These competitors seem unlikely not only because of the difference in the markets that they appear to serve but also because of the nature of their presence in these markets—Jack Daniel’s is a market giant, having sold over thirteen million cases of whiskey in 2021, while VIP Products remains mostly unknown. Jan Conway, Sales Volume of Jack Daniel’s Whiskey Worldwide from 2012 to 2021, Statista (July 20, 2022), https://www.statista.com/statistics/961273/jack-daniels-global-sales-volume/ [https://perma.cc/F6UV-576A].

  36. Petition for Writ of Certiorari, supra note 34, at 8. Because of this longevity of sales, “[a]pproximately 98% of consumers express awareness of the Jack Daniel’s brand.” Id. at 8–9.

  37. Id. at 8.

  38. VIP Prods., LLC v. Jack Daniel’s Props., Inc., 291 F. Supp. 3d 891, 898 (D. Ariz. 2018).

  39. The toys developed from these brands are titled Smella R-Crotches, Heini Sniff’n, Pissness, and Mountain Drool, respectively. Petition for Writ of Certiorari, supra note 34, at 9.

  40. Id. at 10.

  41. The company’s designer even had a Jack Daniel’s bottle on her desk while developing the sketch for the dog toy. Id. at 11–12.

  42. According to VIP Products, the goal of the dog toy was to reflect on “the humanization of the dog in our lives” and “corporations [that] take themselves very seriously.” Hall, supra note 18 (quoting Eric Goldman, Ninth Circuit Rallies in Defense of a Parody Dog Toy–Bad Spaniels v. Jack Daniel’s, Tech. & Mktg. L. Blog (Apr. 2, 2020), https://blog.ericgoldman.org/archives/2020/04/ninth-circuit-rallies-in-defense-of-a-parody-dog-toy-bad-spaniels-v-jack-daniels.htm [https://perma.cc/LF7E-X4BA]. This highlights the impact of perspective on interpretation; while VIP may view certain corporate actions to be too “serious,” Jack Daniel’s views them as creating “an image of sophistication” that should not be tainted with “juvenile bathroom humor.” Petition for Writ of Certiorari, supra note 34, at 5.

  43. VIP Prods., LLC v. Jack Daniel’s Props., Inc., No. CV-14-2057-PHX-SMM, 2016 WL 5408313, at *1 (D. Ariz. Sept. 27, 2016).

  44. Petition for Writ of Certiorari, supra note 34, at 10–11.

  45. Id.

  46. Id. at 4. Jack Daniel’s even licenses in the realm of the same product market involved in this case—pet products. Id.

  47. VIP Prods., LLC, 2016 WL 5408313, at *1.

  48. Id.

  49. Id.

  50. Id. Jack Daniel’s qualifies these words by noting that the font is “tiny.” Petition for Writ of Certiorari, supra note 34, at 11.

  51. Bad Spaniels Dog Toys—Expressive Art or Noisy Trademark Infringers?, Taft L. (Apr. 21, 2020), https://www.taftlaw.com/news-events/law-bulletins/bad-spaniels-dog-toys-expressive-art-or-noisy-trademark-infringers [https://perma.cc/QH6P-RMUF].

  52. John DiGiacomo, What You Should Do if Someone Is Infringing upon Your Trademark, Revision Legal (Sept. 17, 2018), https://revisionlegal.com/trademark/trademarks/someone-is-infringing-upon-your-trademark/ [https://perma.cc/BP89-XGFY].

  53. VIP Prods., LLC, 2016 WL 5408313, at *1. A cease-and-desist letter aims to notify the infringer of the trademark and order them to stop using it immediately. Often, it also notes that if immediate action is not taken, a lawsuit will promptly ensue. DiGiacomo, supra note 52.

  54. VIP Prods., LLC, 2016 WL 5408313, at *1.

  55. Id.

  56. Id. VIP Products also challenged whether Jack Daniel’s even possessed valid trademarks in the first place and, if so, whether they should be canceled. Id. But this challenge was eventually resolved by the court in favor of Jack Daniel’s. Id. at *19.

  57. Id. at *2.

  58. Id.

  59. Id. at *5. Though the court recognized the social commentary inherent in the toy, it refused to extend First Amendment protection to an item that was also being sold commercially. Id. Like in Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, where the court refused to extend protection to a parody dog perfume made both for purposes of expression and to obtain sales, the court refused to extend protection here as the dog toy was bringing in profit for VIP Products. Id.; see Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 415 (S.D.N.Y. 2002).

  60. VIP Prods., LLC, 2016 WL 5408313 at *5.

  61. VIP Prods., LLC v. Jack Daniel’s Props., Inc., 291 F. Supp. 3d 891, 907 (D. Ariz. 2018).

  62. Id.

  63. Id. at 908, 911.

  64. VIP Prods., LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1173 (9th Cir. 2020).

  65. Id. at 1176.

  66. Id. at 1174–76.

  67. Id. at 1174–75 (first quoting Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1241 (9th Cir. 2013); and then quoting Gordon v. Drape Creative, Inc., 909 F.3d 257, 268–69 (9th Cir. 2018)).

  68. Id. at 1174 (quoting Mattel, Inc. v. MCA Recs., Inc., 296 F.3d 894, 900 (9th Cir. 2002)).

  69. Id. at 1175. The court determined the dog toy infused the Jack Daniel’s trademark with sufficient new meaning, unlike in Dr. Seuss Enterprises, L.P. where the book was found to have no creative expression of its own. Id.; see Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1401 (9th Cir. 1997) (explaining that an expressive work must contain sufficient creative commentary to transform it with a “new expression, meaning, or message” (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578 (1994))).

  70. VIP Prods., LLC, 953 F.3d at 1175; see Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 260–61 (4th Cir. 2007) (reasoning that the Chewy Vuiton dog toy did not infringe the Louis Vuitton trademarks because it was a successful parody of the handbags).

  71. VIP Prods., LLC, 953 F.3d at 1175–76.

  72. Id. at 1176.

  73. Petition for Writ of Certiorari, supra note 34, at 18. It is apparent through this filing how much Jack Daniel’s values its trademarks—enough to continue pouring money and effort into this six-year-running legal battle. Stephen P. Scuderi, IP Frontiers: Jack Daniel’s Going to the Dogs–Balancing Trademark Rights and Free Speech, HRFM, https://www.hrfmlaw.com/ip-frontiers-jack-daniels-may-going-to-the-dogs-balancing-trademark-rights-and-free-speech/ [https://perma.cc/JH8W-EBGY] (last visited Feb. 1, 2023).

  74. Petition for Writ of Certiorari, supra note 34, at 5–7.

  75. Id. at 5–6.

  76. Id.

  77. These courts are the “Second, Fourth, Fifth, Seventh, Eighth, and Tenth Circuits.” Id. at 5.

  78. Id. Though the Trademark Trial and Appeal Board does not possess the power to itself hear cases concerning trademark infringement, its expertise regarding trademark registration makes its opinion influential for the courts that do hear such cases. About the Trademark Trial and Appeal Board, USPTO, https://www.uspto.gov/trademarks/laws/trademark-trial-and-appeal-board [https://perma.cc/R9RD-GL8Z] (last visited Feb. 2, 2023). Further, its rulings may even result in issue preclusion binding federal courts on claims of trademark infringement. Supreme Court Holds that TTAB Ruling May Bind Federal Court, Bass Berry Sims (Mar. 25, 2015), https://www.bassberry.com/news/supreme-court-holds-that-ttab-ruling-may-bind-federal-court/ [https://perma.cc/4UB6-QWLL].

  79. Petition for Writ of Certiorari, supra note 34, at 18.

  80. Id. at 18–19.

  81. Id. at 22–23.

  82. Id. at 17. Because only a few circuit courts apply this heightened test, plaintiffs will be motivated to file in those circuits to receive this increased protection. Id. at 27. VIP Products itself has even taken advantage of this in the past for its litany of infringement cases. Id. at 27–28.

  83. Id. at 17. The main tenets of the Act highlighted by Jack Daniel’s are the protection of a holder’s investment in good will and the prevention of consumer confusion. Id. at 28.

  84. Id. at 17, 30; see also Jennifer E. Rothman, Commercial Speech, Commercial Use, and the Intellectual Property Quagmire, 101 Va. L. Rev. 1929, 1939 (2015) (noting that differing opinions on the Lanham Act are not simply matters of academic curiosity but often change the outcome of the case).

  85. See generally Jack Daniel’s Props., Inc. v. VIP Prods., LLC, 141 S. Ct. 1054 (2021).

  86. VIP Prods., LLC v. Jack Daniel’s Props., Inc., 953 F.3d 1170, 1175 (9th Cir. 2020).

  87. VIP Prods., LLC v. Jack Daniel’s Props., Inc., No. CV-14-02057-PHX-SMM, 2021 WL 5710730, at *6–7 (D. Ariz. Oct. 8, 2021) (finding that the dog toy was entitled to First Amendment protection and thus, did not infringe).

  88. Id. at *6 (noting that despite Jack Daniel’s view that “a dog relishing a bowel movement on a carpet [was] distasteful and an abuse of its mark,” the Ninth Circuit ensured that it had “no means to protect the viability of its trademark”; “[y]et, the [district court] is bound by Ninth Circuit precedent”).

  89. VIP Prods., LLC v. Jack Daniel’s Props., Inc., No. 21-16969, 2022 WL 1654040, at *1 (9th Cir. Mar. 18, 2022).

  90. No. 22-148, Sup. Ct., https://www.supremecourt.gov/docket/docketfiles/html/public/22-148.html [https://perma.cc/XRT8-4354] (last visited Dec. 14, 2022).

  91. See Deborah R. Gerhardt, Consumer Investment in Trademarks, 88 N.C. L. Rev. 427, 433 (2010) (explaining a trademark’s “twin purposes of protecting consumers and trademark owners”).

  92. Any potential claims of infringement will not be successful as a result of the expansive shield of First Amendment protection that the Ninth Circuit allowed in this case. See discussion supra Section II.C.

  93. See discussion supra Section II.C. Without such clarifications, this loophole will leave a plethora of confused consumers and discouraged producers in its wake. See discussion infra Section IV.D.

  94. Mut. of Omaha Ins. v. Novak, 836 F.2d 397, 402 (8th Cir. 1987).

  95. A trademark’s influence is not absolute but is meant to be checked by the market; such a check, though, requires the public to have all the information. See Deven R. Desai, From Trademarks to Brands, 64 Fla. L. Rev. 981, 1003 (2012) (“[T]he community can spread rumors about the brand, attack the marketer’s vision, and in some cases effectively hijack the brand to redirect its course . . . .”).

  96. Wright, supra note 16, at 221.

  97. Note that some scholars argue that only consumer choices regarding actual purchases, not examination prior to such purchases, are relevant to trademark law. See, e.g., Mark P. McKenna, A Consumer Decision-Making Theory of Trademark Law, 98 Va. L. Rev. 67, 83 (2012).

  98. In the past, these two functions were seen as the main benefits of trademarks. Lemley, supra note 2, at 1690, 1695, 1697; Gerhardt, supra note 91, at 446.

  99. See Desai, supra note 95, at 1000.

  100. See Gerhardt, supra note 91, at 436.

  101. For example, by purchasing a Prius, the consumer may be expressing that they are environmentally conscious. Id. at 448.

  102. Id. at 450 (explaining that consumers are active users of trademarks, not mere passive recipients).

  103. See id.

  104. See Desai, supra note 95, at 997.

  105. To achieve longevity, brands must imagine the future by analyzing consumer data and taking into consideration what consumers expect from them. Id.

  106. See id. at 1002.

  107. See id.

  108. If a court overregulates, consumers can no longer rely on the trademark to acquire information. See id. at 989.

  109. As often stated in the field of copyright law, courts cannot be trusted to make such value determinations of social commentary or artistic expression. See Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) (“It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations.”).

  110. See Desai, supra note 95, at 1000.

  111. See Marcus Startzel, The Metrics of Modern Commerce: How to Succeed in Today’s Environment, Forbes (Mar. 16, 2021, 7:20 AM), https://www.forbes.com/sites/forbesbusinesscouncil/2021/03/16/the-metrics-of-modern-commerce-how-to-succeed-in-todays-environment/?sh=1bca376a7ccd [https://perma.cc/3XUW-ALC4].

  112. See supra Part III. These downfalls have received limited discussion, as many believe that the Rogers test has a limited application in that it applies only to noncommercial works. Ivan Blomqvist, The Rogers Test: Free Speech v. Trademark Protection, Moeller (Feb. 12, 2021), https://moellerip.com/the-rogers-test-free-speech-v-trademark-protection/ [https://perma.cc/EA6F-8DLZ].

  113. Figuring out the “why” helps to avoid broad application of strict rules that do not effectively address the particular situation at issue. For a discussion of the differences between standards and rules, see generally Louis Kaplow, Rules Versus Standards: An Economic Analysis, 42 Duke L.J. 557 (1992).

  114. 15 U.S.C. § 1125(a)(1); Rothman, supra note 84.

  115. See infra Section IV.A.

  116. See infra Section IV.D.

  117. See generally Hickey, supra note 17.

  118. This discussion is considered simplified because it does not consider any available defenses.

  119. 15 U.S.C. § 1125(a)(1).

  120. Id. § 1127.

  121. Id.

  122. It is likely that this explicit reference stems from earlier concerns of courts that the regulation of trademarks did not have a constitutional basis. These concerns arose during the Trade-Mark Cases in the late nineteenth century. Zvi S. Rosen, Federal Trademark Law: From Its Beginnings, ABA, https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2018-19/march-april/federal-trademark-law/ [https://perma.cc/HL9G-7XFH] (last visited Jan. 23, 2023).

  123. See Peter C. Christensen & Teresa C. Tucker, The “Use in Commerce” Requirement for Trademark Registration After Larry Harmon Pictures, 32 IDEA: J. Franklin Pierce Ctr. for Intell. Prop. 327, 329 (1992) (“At this point it is clear that Congress has unquestioned power to further any constitutional goal via the commerce clause.”).

  124. United States v. Lopez, 514 U.S. 549, 558–59 (1995). In Lopez, the Court announced three broad categories of activities that may be regulated under the Commerce Clause: (1) channels of interstate commerce; (2) instrumentalities/things of interstate commerce; and (3) those that substantially affect interstate commerce. Id. Trademarks would not qualify as a channel of interstate commerce but may fall into category (2) or (3) depending on how the trademark is employed.

  125. Wickard v. Filburn, 317 U.S. 111, 125 (1942). The Court in Wickard recognized that an activity that may seem purely local upon first impression can raise to a level of interstate impact in the aggregate. Id.

  126. The Federal Circuit addressed whether de minimis transactions qualified as a use in commerce and held that they did in Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986 (Fed. Cir. 2016).

  127. McDermott Will & Emery, Satisfaction of Lanham Act Use “in Commerce” Requirement Does Not Require Much, Nat’l L. Rev. (Dec. 29, 2016), https://www.natlawreview.com/article/satisfaction-lanham-act-use-commerce-requirement-does-not-require-much [https://perma.cc/9ZY6-CQ47].

  128. See Lisa P. Ramsey, Free Speech Challenges to Trademark Law After Matal v. Tam, 56 Hous. L. Rev. 401, 420 (2018) (noting that Justice Alito recognized “a deeper problem with the argument that commercial speech may be cleansed of any expression likely to cause offense”).

  129. John Basenfelder, What’s the Use? Why a Commercial Use Requirement Is Not Necessary for Infringement Claims Under the Lanham Act, 88 Temp. L. Rev. 78, 90 (2017) (“[M]ost editorial, artistic, and humorous works are sold in commerce.” (quoting United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc. 128 F.3d 86, 91–92 (2d Cir. 1997))).

  130. The same requirement is also present in patent law, despite being based on the Progress Clause instead of the Commerce Clause. See Water Techs. Corp. v. Calco, Ltd., 658 F. Supp. 961, 973 (N.D. Ill. 1986), aff’d in part, rev’d in part, 850 F.2d 660 (Fed. Cir. 1988) (“Under the law, even a single sale . . . can constitute an infringement.”).

  131. Millie Johnson, Remedies for Intellectual Property Right Infringement, RocketLawyer, https://www.rocketlawyer.com/gb/en/quick-guides/remedies-for-intellectual-property-right-infringement [https://perma.cc/P5VC-A2FV] (last visited Feb. 12, 2023).

  132. eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 391 (2006).

  133. Injunctions will only be issued for commercial uses because there must first have been a sale or intent to sell to stop or prevent sales. Id. at 392.

  134. Free riding is a large focus of all types of intellectual property law. Rothman, supra note 84, at 1995.

  135. Basenfelder, supra note 129, at 98.

  136. Rothman, supra note 84, at 1994.

  137. See id.

  138. See Brooke Erdos Singer & Maxine Sharavsky, Using Third Parties’ Trademarks: Unpacking Commerciality, Competition, and Confusion, NYSBA Bright Ideas, Spring 2017, at 1, 1 (“[A]n advertisement is no less ‘commercial’ because it promotes brand awareness or loyalty rather than explicitly proposing a transaction in a specific product or service.”).

  139. Basenfelder, supra note 129, at 85.

  140. Rothman, supra note 84, at 1947. These categories are borrowed from the codification of the fair use doctrine in the Copyright Act. Id. Trademark law is quite similar to copyright law in its underlying principles. Id. at 1994–95.

  141. Id. at 1968. Two examples of qualifying similar works in the digital age include gripe sites and fan sites, as long as no commercial transactions are proposed by their commentary. Singer & Sharavsky, supra note 138, at 17–18.

  142. Rothman, supra note 84, at 2008.

  143. The view that either of these possibilities results in harm is borrowed from the remedies present regarding patent infringement. See, e.g., eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 390 (2006).

  144. Heather Boushey & Helen Knudsen, The Importance of Competition for the American Economy, White House (July 9, 2021), https://www.whitehouse.gov/cea/written-materials/2021/07/09/the-importance-of-competition-for-the-american-economy/ [https://perma.cc/DWQ2-VPK7].

  145. Id.

  146. Id.

  147. Geertjan De Vries et al., Trademark or Patent? The Effects of Market Concentration, Customer Type and Venture Capital Financing on Start-Ups’ Initial IP Applications, 24 Industry & Innovation 325, 328 (Sept. 19, 2016), https://www.tandfonline.com/doi/pdf/10.1080/13662716.2016.1231607?needAccess=true [https://perma.cc/XQE3-M6T5].

  148. Boushey & Knudsen, supra note 144.

  149. Rothman, supra note 84, at 1964.

  150. Id. at 1995 (“[C]ommercial users can, and therefore should, pay for the use.”).

  151. Caselaw regarding patents may be translated to provide valuable insight on when the use of a trademark goes too far. See, e.g., Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970) (looking to commercial success, extent of use, portion of profit credited to use, and expert opinions).

  152. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 260 (4th Cir. 2007).

  153. Basenfelder, supra note 129, at 80. Generally, a commercial use is granted less First Amendment protection by courts, likely because it is viewed as providing some benefit to its seller. Id.

  154. The First Amendment does not protect fraudulent expression. Id. at 101. The term fraudulent here is used to encompass both deceptive and misleading commercial speech as well, not just speech that actually turns out to be false. See Ramsey, supra note 128, at 406, 424.

  155. Presumptions are common in intellectual property law, due to the many countervailing policy considerations involved. One example is the presumption of validity given to patents in court. 35 U.S.C. § 282.

  156. See Singer & Sharavsky, supra note 138, at 23 (“[L]ikelihood of confusion is low where a parody is effective.”).

  157. Desai, supra note 95, at 1011–12.

  158. Lemley, supra note 2, at 1704 (noting that the majority of trademarks do not rise to the level of fame required to burn in the consumer’s mind an association even for unrelated products).

  159. But see Kramer, supra note 20, at 892 (arguing that artists and small businesses do not even attempt to dredge through the complicated field of trademarks and thus, their creation is suppressed regardless of whether it would have actually been permissible).

  160. Desai, supra note 95, at 1015.

  161. Lemley, supra note 2, at 1709 (noting that the licensing of trademarks must be supervised for the trademark itself to continue to be valid).

  162. Id. at 1707.

  163. The application of Rogers only in instances of noncommercial use has already been endorsed by some courts. See, e.g., Wright, supra note 16, at 203–04.

  164. Patrick D. Curran, Diluting the Commercial Speech Doctrine: “Noncommercial Use” and the Federal Trademark Dilution Act, 71 U. Chi. L. Rev. 1077, 1081 (2014).

  165. Am. Fam. Life Ins. v. Hagan, 266 F. Supp. 2d 682, 700–01 (N.D. Ohio 2002).

  166. Id. at 686, 701.

  167. Singer & Sharavsky, supra note 138, at 18.

  168. Id.

  169. Id.

  170. Id. The key function of this defense appears to be similar to the purpose of the patent law eligibility requirement. Intellectual property rights should not tie up the “building blocks” of thought and preempt all further creation, or here description. See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014).

  171. Singer & Sharavsky, supra note 138, at 18. To act “in good faith,” the infringer must not have set out to gain from use of the trademark. One factor courts look at in this analysis is whether the infringer used “more of the third party’s mark than is required” for descriptive purposes. Id.

  172. Id. Essentially, there must be no other way to say what the infringer desires to say.

  173. Id.

  174. See Rothman, supra note 84, at 1940.

  175. Id. Keep in mind, though, that there must still have been at least one sale to satisfy the Commerce Clause and for the Act to apply regarding a particular producer. See supra Section IV.A.

  176. This is so because the Act is void of any qualifications for this “connection,” such as the presence of the word “commercial” before “goods and services.” See supra Section IV.A.

  177. Rothman, supra note 84, at 1995.

  178. Rogers itself even noted the distinction between what is considered commercial in nature and what is not, when the court explained that “the expressive element of titles requires more protection than the labeling of ordinary commercial products.” Rogers v. Grimaldi, 875 F.2d 994, 998 (2d Cir. 1989) (emphasis added).

  179. Hall, supra note 18.

  180. See McKenna, supra note 97, at 72 (arguing that trademark infringement should only apply if the use would deceive consumers into purchasing something that they would not have otherwise).

  181. Hall, supra note 18. To ensure accurate supervision of producers, each brand should be allowed to build and maintain a reputation with a limited allowance of free riding. Id.

  182. Consumers will only be able to trust and rely on trademarks if producers are held accountable. But producers can only be held accountable if their efforts are protected from infringement. An example of such a case is counterfeiting, because both the consumer and producer would not be in favor of allowing such a product to enter the market. Gerhardt, supra note 91, at 439.

  183. See id. Consumers may not always be deceived by a noncommercial use of a mark, eliminating the need to protect the consumers and thus, to hold producers accountable.

  184. Further, in a trademark infringement case there is no advocate for the public in the courtroom. Such cases are distinctly private matters between the producer and the alleged infringer. Id. at 434, 447.

  185. Hall, supra note 18. By noticing a trademark on a product, consumers can quickly make a judgment about what they are purchasing. This shorthand not only decreases search costs for the particular purchase involved but will also lead to an overall increase in quality and features over time. Id.

  186. Id.

  187. Id.

  188. Brands can no longer move in silence in the digital age. See Desai, supra note 95, at 1002.

  189. Rothman, supra note 84, at 1980 (“Consumers care about . . . what facial cream Scarlett Johansson uses, or what watch deep-sea divers like James Cameron wear.”).

  190. Hall, supra note 18.

  191. What is more, they are actually more likely to sue given current data on products liability suits. See Ben Edwards, Product Liability Case Filings in US Federal Courts Reach Eight-Year High, Glob. Legal Post (June 1, 2020), https://www.globallegalpost.com/news/product-liability-case-filings-in-us-federal-courts-reach-eight45year-high-49884800 [https://perma.cc/4S8N-4YGL] (noting that the number of products liability suits filed in 2019 was the highest over a ten-year period, absent multidistrict litigation).

  192. See Desai, supra note 95, at 989 (noting that communities “comment and share both positive and negative information” to brands regarding their products).

  193. Hall, supra note 18. This accountability will likely come in the form of lost sales but may even shine through more harsh means, such as boycotts or strikes.

  194. Cf. Rothman, supra note 84, at 1965 (explaining that courts are hesitant to make judgments about aesthetic or quality in copyright cases).

  195. Hall, supra note 18.

  196. See Gerhardt, supra note 91, at 438–40.