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

                   PRELIMINARY PRINT

             Volume 599 U. S. Part 1
                             Pages 140–165




       OFFICIAL REPORTS
                                    OF


   THE SUPREME COURT
                                June 8, 2023


Page Proof Pending Publication


                   REBECCA A. WOMELDORF
                           reporter of decisions




    NOTICE: This preliminary print is subject to formal revision before
  the bound volume is published. Users 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.
140                      OCTOBER TERM, 2022

                                  Syllabus


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

certiorari to the united states court of appeals for
                  the ninth circuit
       No. 22–148. Argued March 22, 2023—Decided June 8, 2023
The Lanham Act, the core federal trademark statute, defnes a trademark
  by its primary function: identifying a product's source and distinguish-
  ing that source from others. In serving that function, trademarks help
  consumers select the products they want to purchase (or avoid) and help
  producers reap the fnancial rewards associated with a product's good
  reputation. To help protect trademarks, the Lanham Act creates fed-
  eral causes of action for trademark infringement and trademark dilu-
  tion. In a typical infringement case, the question is whether the de-
  fendant's use of a mark is “likely to cause confusion, or to cause mistake,
  or to deceive.” 

15 U. S. C. §§ 1114

(1)(A), 1125(a)(1)(A). In a typical di-
  lution case, the question is whether the defendant “harm[ed] the reputa-
  tion” of a famous trademark. §§ 1125(c)(2)(A), (C).
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     Respondent VIP Products makes a squeaky, chewable dog toy de-
  signed to look like a bottle of Jack Daniel's whiskey. But not entirely.
  On the toy, for example, the words “Jack Daniel's” become “Bad Span-
  iels.” And “Old No. 7 Brand Tennessee Sour Mash Whiskey” turns into
  “The Old No. 2 On Your Tennessee Carpet.” These jokes did not im-
  press petitioner Jack Daniel's Properties, which owns trademarks in the
  distinctive Jack Daniel's bottle and in many of the words and graphics
  on its label.
     Soon after the Bad Spaniels toy hit the market, Jack Daniel's de-
  manded that VIP stop selling it. VIP fled suit, seeking a declaratory
  judgment that Bad Spaniels neither infringed nor diluted Jack Daniel's
  trademarks. Jack Daniel's counterclaimed for infringement and dilu-
  tion. At summary judgment, VIP argued that Jack Daniel's infringe-
  ment claim failed under the so-called Rogers test—a threshold test
  developed by the Second Circuit and designed to protect First
  Amendment interests in the trademark context. See Rogers v. Gri-
  maldi, 

875 F. 2d 994

. When “expressive works” are involved, VIP con-
  tended, that test requires dismissal of an infringement claim at the out-
  set unless the complainant can show either (1) that the challenged use
  of a mark “has no artistic relevance to the underlying work” or (2) that
  it “explicitly misleads as to the source or the content of the work.” 

Id., at 999

. Because Jack Daniel's could not make that showing, VIP
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                                  Syllabus

  claimed, the Lanham Act's statutory “likelihood of confusion” standard
  became irrelevant. And as for the dilution claim, VIP urged that Jack
  Daniel's could not succeed 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 of VIP's contentions for a common
  reason: because VIP had used the cribbed Jack Daniel's features as
  trademarks—i. e., to identify the source of its own products. As the
  District Court saw it, when another's trademark is used for “source
  identifcation,” Rogers does not apply, and instead the infringement suit
  turns on likelihood of confusion. The court likewise rejected VIP's in-
  vocation of the fair-use exclusion, holding that parodies fall within that
  exclusion only when they do not use a famous mark to identify the
  source of the alleged diluter's product. The case proceeded to a bench
  trial, where the District Court found that consumers were likely to be
  confused about the source of the Bad Spaniels toy and that the toy's
  negative associations with dog excrement (e. g., “The Old No. 2”) would
  harm Jack Daniel's reputation. The Ninth Circuit reversed. Finding
  the infringement claim subject to the threshold Rogers test, the Court
  of Appeals remanded the case to the District Court to decide whether

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  Jack Daniel's could satisfy either prong of that test. And the Court of
  Appeals awarded judgment on the dilution claim to VIP, holding that
  because Bad Spaniels parodies Jack Daniel's, it falls under the “noncom-
  mercial use” exclusion. § 1125(c)(3)(C). 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. The Court of
  Appeals summarily affrmed.
Held:
    1. When an alleged infringer uses a trademark as a designation of
 source for the infringer's own goods, the Rogers test does not apply.
 Pp. 152–161.
       (a) The Second Circuit created the Rogers test for titles of “artistic
 works” based on its view that such titles have an “expressive element”
 implicating “First Amendment values” and carry only a “slight risk” of
 confusing consumers about the “source or content” of the underlying
 work. 875 F. 2d, at 998–1000. Over the decades, lower courts adopting
 Rogers have confned it to similar cases, in which a trademark is used
 not to designate a work's source, but solely to perform some other ex-
 pressive function. See, e. g., Mattel, Inc. v. MCA Records, Inc., 

296 F. 3d 894, 901

 (use of the Barbie name in band's song “Barbie Girl”
 was “not [as] a source identifer”). The same courts, though, routinely
 conduct likelihood-of-confusion analysis in cases where trademarks are
142 JACK DANIEL'S PROPERTIES, INC. v. VIP PRODUCTS LLC

                                Syllabus

 used as trademarks—i. e., to designate source. See, e. g., Tommy Hil-
 fger Licensing, Inc. v. Nature Labs, LLC, 

221 F. Supp. 2d 410

, 414–415
 (parodic pet perfumes did not trigger Rogers because defendant's use of
 Tommy Hilfger's mark was “at least in part” for “source identifcation”).
 Thus, whatever Rogers' merit—an issue on which this Court takes
 no position—it has always been a cabined doctrine: It has not insu-
 lated from ordinary trademark scrutiny the use of trademarks as
 trademarks.
    That conclusion fts trademark law, and refects its primary mission.
 Consumer confusion about source—trademark law's cardinal sin—is
 most likely to arise when someone uses another's trademark as a trade-
 mark. In such cases, Rogers has no proper application. Nor does that
 result change because the use of a mark has other expressive content.
 Under the Ninth Circuit's approach, Bad Spaniels was automatically
 entitled to Rogers' protection because it “communicate[d] a humorous
 message.” 

953 F. 3d 1170

, 1175. On that view, few trademark cases
 would ever get to the likelihood-of-confusion analysis. And the Ninth
 Circuit was mistaken to believe that the First Amendment demanded
 such a result. When a mark is used as a source identifer, the First
 Amendment does not demand a threshold inquiry. Pp. 153–159.
       (b) In this case, VIP conceded that it used the Bad Spaniels trade-
Page Proof Pending Publication
 mark and trade dress as source identifers. And VIP has said and done
 more in the same direction with respect to Bad Spaniels and other simi-
 lar products. The only question remaining is whether the Bad Spaniels
 trademarks are likely to cause confusion. Although VIP's effort to par-
 ody Jack Daniel's does not justify use of the Rogers test, it may make a
 difference in the standard trademark analysis. This Court remands
 that issue to the courts below. Pp. 159–161.
    2. The Lanham Act's exclusion from dilution liability for “[a]ny non-
 commerical use of a mark,” § 1125(c)(3)(C), does not shield parody, criti-
 cism, or commentary when an alleged diluter uses a mark as a designa-
 tion of source for its own goods. The Ninth Circuit's holding to the
 contrary puts the noncommercial exclusion in confict with the statute's
 fair-use exclusion. The latter exclusion specifcally covers uses “paro-
 dying, criticizing, or commenting upon” a famous mark owner,
 § 1125(c)(3)(A)(ii), but does not apply when the use is “as a designation
 of source for the person's own goods or services,” § 1125(c)(3)(A). Given
 that carve-out, parody is exempt from liability only if not used to desig-
 nate source. The Ninth Circuit's expansive view of the noncommercial
 use exclusion—that parody is always exempt, regardless whether it des-
 ignates source—effectively nullifes Congress's express limit on the fair-
 use exclusion for parody. Pp. 161–162.
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                                  Syllabus

953 F. 3d 1170

, vacated and remanded.

   Kagan, J., delivered the opinion for a unanimous Court. Sotomayor,
J., fled a concurring opinion, in which Alito, J., joined, post, p. 163. Gor-
such, J., fled a concurring opinion, in which Thomas and Barrett, JJ.,
joined, post, p. 165

   Lisa S. Blatt argued the cause for petitioner. With her
on the briefs were Amy Mason Saharia, Matthew B. Nichol-
son, Alexander Gazikas, and Isaac S. Crum.
   Matthew Guarnieri argued the cause for the United
States as amicus curiae urging reversal. With him on the
brief were Solicitor General Prelogar, Principal Deputy
Assistant Attorney General Boynton, Deputy Solicitor Gen-
eral Stewart, Daniel Tenny, Thomas W. Krause, Christina
J. Hieber, Thomas L. Casagrande, Mary Beth Walker, and
Benjamin T. Hickman.
   Bennett Evan Cooper argued the cause for respondent.
With him on the brief were David G. Bray, Fredric D. Bel-
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lamy, and Vail C. Cloar.*

  *Briefs of amici curiae urging reversal were fled for the American
Apparel & Footwear Association et al. by John P. O'Herron and Zachary
D. Cohen; for the American Craft Spirits Association et al. by Steffen N.
Johnson, Michael W. McConnell, and Conor D. Tucker; for the American
Intellectual Property Law Association by William G. Barber, Giulio E.
Yaquinto, Lisa M. Tittemore, and Katherine W. Soule; for Campari
America LLC by Seth P. Waxman, Thomas G. Saunders, Mark G. Matu-
schak, and Hannah E. Gelbort; for the Campbell Soup Co. by H. Christo-
pher Bartolomucci, Kathryn E. Tarbert, and Adam G. Ciongoli; for the
Chamber of Commerce of the United States of America et al. by Gregory
G. Garre, Blake E. Stafford, Erica Klenicki, and Michael A. Tilghman
II; for Constellation Brands, Inc., by Edward T. Colbert and William M.
Merone; for the International Trademark Association by Vijay K. Toke;
and for NIKE, Inc., by Stanley J. Panikowski.
  Briefs of amici curiae urging affrmance were fled for First Amend-
ment Professors by Rebecca Tushnet, pro se; for the Foundation for Indi-
vidual Rights and Expression by Abigail Smith and JT Morris; for
MSCHF Product Studio, Inc., by William D. Patterson and John F. Bel-
caster; for the Motion Picture Association, Inc., by Susan J. Kohlmann
144 JACK DANIEL'S PROPERTIES, INC. v. VIP PRODUCTS LLC

                         Opinion of the Court

  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 con-
sumers to think that Jack Daniel's had created, or was other-
wise responsible for, the dog toy. And Bad Spaniels had di-
luted the marks, the argument went on, by associating the
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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 con-
fusion, 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

and Adam G. Unikowsky; for Dan McCall et al. by Paul Alan Levy and
Scott L. Nelson; and for 30 Trademark Law Professors by Phillip R.
Malone.
   Briefs of amici curiae were fled for the Authors Alliance et al. by
Christopher T. Bavitz; for the Electronic Frontier Foundation by Corynne
McSherry and David Greene; for the Intellectual Property Owners Asso-
ciation by Eric R. Moran and Paul H. Berghoff; for Intellectual Property
Professors et al. by Megan K. Bannigan, David H. Bernstein, and Jared
I. Kagan; for Levi Strauss & Co. et al. by Gregory S. Gilchrist; for the
New York Intellectual Property Law Association by Robert J. Rando, Wil-
liam Thomashower, and Irena Royzman; for Scholars et al. by Adam W.
Hofmann; and for Andrew C. Michaels by Mr. Michaels, pro se.
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                      Opinion of the Court

Spaniels toy. And that test knocked out Jack Daniel's claim,
whatever the likelihood of confusion. Likewise, Jack's dilu-
tion claim failed—though on that issue the problem was stat-
utory. The trademark law provides that the “noncommer-
cial” 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 mes-
sage—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 trade-
mark 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
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count as noncommercial just because it parodies, or other-
wise 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, defnes
a trademark as follows: “[A]ny word, name, symbol, or de-
vice, or any combination thereof ” that a person uses “to iden-
tify and distinguish his or her goods . . . from those manufac-
tured or sold by others and to indicate the source of the
goods.” § 1127. The frst part of that defnition, 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 defnition de-
146 JACK DANIEL'S PROPERTIES, INC. v. VIP PRODUCTS LLC

                      Opinion of the Court

scribes every trademark's “primary” function: “to identify
the origin or ownership of the article to which it is affxed.”
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 man-
ner of message. But whatever else it may do, a trademark
is not a trademark unless it identifes a product's source (this
is a Nike) and distinguishes that source from others (not any
other sneaker brand). See generally 1 J. McCarthy, Trade-
marks 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 beneft 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
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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 signifcant value from its marks. They
ensure that the producer itself—and not some “imitating
competitor”—will reap the fnancial 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 Offce to get its mark placed on a
federal register. Consistent with trademark law's basic pur-
pose, 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 cri-
teria also are met, the registering trademark owner receives
certain benefts, useful in infringement litigation. See, e. g.,
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                      Opinion of the Court

Iancu v. Brunetti, 588 U. S. –––, ––– (2019) (noting that “reg-
istration constitutes `prima facie evidence' of the mark's va-
lidity”). But the owner of even an unregistered trademark
can “use [the mark] in commerce and enforce it against in-
fringers.” 

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 statu-
tory 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
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that stands directly opposed to the law's twin goals of facili-
tating 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 likeli-
hood 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 tar-
nishment” (as well as by “blurring,” not relevant here).
§ 1125(c)(1). As the statute describes the idea, an “associa-
tion 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 ex-
clusion 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)
148 JACK DANIEL'S PROPERTIES, INC. v. VIP PRODUCTS LLC

                      Opinion of the Court

(3)(A)(ii). The fair-use exclusion, though, comes with a ca-
veat. A defendant cannot get its beneft—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 Ten-
nessee Sour Mash Whiskey—boasts a fair number of trade-
marks. Recall what the bottle looks like (or better yet, re-
trieve a bottle from wherever you keep liquor; it's probably
there):




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“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 fligree (i. e., twirling white lines). Finally, what might
be thought of as the platform for all those marks—the whis-
key'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
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                     Opinion of the Court

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 ad-
dressed below), VIP both “own[s]” and “use[s]” the “ `Bad
Spaniels' trademark and trade dress.” App. 3, 11; see infra,
at 150, 160. 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.



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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 fli-
greed border. The words “Bad Spaniels” replace “Jack Dan-
iel'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
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                     Opinion of the Court

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:




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At the bottom is a disclaimer: “This product is not affliated
with Jack Daniel Distillery.” In the middle are some warn-
ings 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 149.
Jack Daniel's counterclaimed under the Lanham Act for
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                      Opinion of the Court

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 con-
tended, the so-called Rogers test requires dismissal of an in-
fringement 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 be-
came irrelevant. Second, VIP urged that Jack Daniel's
could not succeed on a dilution claim because Bad Spaniels
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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 fea-
tures 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 identifcation”—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 Dan-
iel's prevailed. The District Court found, based largely on
survey evidence, that consumers were likely to be confused
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                      Opinion of the Court

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 ex-
crement,” 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 “com-
municates 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 statu-
tory exclusion for parody and other fair use, as the District
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Court had. Instead, the Court of Appeals held that the ex-
clusion for “noncommercial use” shielded VIP from liability.
§ 1125(c)(3)(C). The “use of a mark may be `noncommer-
cial,' ” 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 sum-
mary judgment to VIP on infringement. Jack Daniel's ap-
pealed, and the Ninth Circuit summarily affrmed.
   We then granted certiorari to consider the Court of
Appeals' rulings on both infringement and dilution. 598
U. S. ––– (2022).
                               II
 Our frst and more substantial question concerns Jack
Daniel's infringement claim: Should the company have had
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                        Opinion of the Court

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 con-
texts, 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 145–146. 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 in-
quiry is not blind to the expressive aspect of the Bad Span-
iels toy that the Ninth Circuit highlighted. Beyond source
designation, VIP uses the marks at issue in an effort to “par-
ody” or “make fun” of Jack Daniel's. Tr. of Oral Arg. 58, 66.
And that kind of message matters in assessing confusion be-
cause consumers are not so likely to think that the maker of
Page Proof Pending Publication
a mocked product is itself doing the mocking.
                                  A
  To see why the Rogers test does not apply here, frst con-
sider the case from which it emerged. The defendants there
had produced and distributed a flm by Federico Fellini titled
“Ginger and Fred” about two fctional Italian cabaret danc-
ers (Pippo and Amelia) who imitated Ginger Rogers and
Fred Astaire. When the flm 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 con-
sumers about either “the source or the content of the work.”
  1
   To be clear, when we refer to “the Rogers threshold test,” we mean
any threshold First Amendment flter.
154 JACK DANIEL'S PROPERTIES, INC. v. VIP PRODUCTS LLC

                      Opinion of the Court

Id.,

 at 999–1000. So, the court concluded, a threshold flter
was appropriate. When a title “with at least some artistic
relevance” was not “explicitly misleading as to source or con-
tent,” 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
confned 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 toy-
maker 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 ap-
plied Rogers. Mattel, Inc. v. MCA Records, Inc., 

296 F. 3d 894, 901

 (2002). That was because, the court reasoned, the
Page Proof Pending Publication
band's use of the Barbie name was “not [as] a source identi-
fer”: 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 Cir-
cuit dismissed a suit under Rogers when a sports artist de-
picted 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 flm The Hangover: Part II de-
scribed his luggage as a “Louis Vuitton” (though pronounc-
ing it Lewis), a district court dismissed the complaint under
Rogers. See Louis Vuitton Malletier S. A. v. Warner Bros.
Entertainment Inc., 

868 F. Supp. 2d 172

 (SDNY 2012). All
parties agreed that the flm was not using the Louis Vuitton
mark as its “own identifying trademark.” 

Id., at 180

 (inter-
                   Cite as: 

599 U. S. 140

 (2023)            155

                      Opinion of the Court

nal quotation marks omitted). When that is so, the court
reasoned, “confusion will usually be unlikely,” and the “inter-
est 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 trade-
marks 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 con-
text. 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 identifer.
See United We Stand Am., Inc. v. United We Stand, Am.
New York, Inc., 

128 F. 3d 86

, 93 (1997). True, that slogan
Page Proof Pending Publication
had expressive content. But the defendant group, the court
reasoned, was using it “as a mark,” to suggest the “same
source identifcation” 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 modifed 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 Rog-
ers test has applied only to cases involving “non-trademark
uses”—or otherwise said, cases in which “the defendant has
156 JACK DANIEL'S PROPERTIES, INC. v. VIP PRODUCTS LLC

                      Opinion of the Court

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 trade-
marks, “to identify or brand [a defendant's] goods or serv-
ices.” 

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 de-
fendant sold “a line of pet perfumes whose names parody
elegant brands sold for human consumption.” Tommy Hil-
fger 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 Hilfger
didn't much like. The defendant asked for application of
Rogers. The court declined it, relying on Harley-Davidson.
Page Proof Pending Publication
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 identifca-
tion”—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 “mak-
ing an expressive comment,” including a parody of a differ-
ent product. 

Id., at 415

. The defendant is still “mak[ing]
trademark use of another's mark,” and must meet an in-
fringement claim on the usual battleground of “likelihood of
confusion.” 

Id., at 416

.
   That conclusion fts trademark law, and refects its primary
mission. From its defnition of “trademark” onward, the
Lanham Act views marks as source identifers—as things
that function to “indicate the source” of goods, and so to “dis-
                        Cite as: 

599 U. S. 140

 (2023)                       157

                            Opinion of the Court

tinguish” them from ones “manufactured or sold by others.”
§ 1127; see supra, at 145–146. The cardinal sin under the
law, as described earlier, is to undermine that function. See
supra, at 146. 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 identifer—rather than for some
other expressive function. To adapt one of the cases noted
above: Suppose a flmmaker 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 154. Now think
about a different scenario: A luggage manufacturer uses an
ever-so-slightly modifed LV logo to make inroads in the suit-
case 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.
Page Proof Pending Publication
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 dramati-
cally part ways with the Ninth Circuit, which thought that

  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 dissimi-
larity 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).
158 JACK DANIEL'S PROPERTIES, INC. v. VIP PRODUCTS LLC

                       Opinion of the Court

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 con-
noting the product's olden monastic roots:




Page Proof Pending Publication

Or take a band name that “not only identifes 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 Hilfger/Holedigger litiga-
tion. See supra, at 156. 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 ev-
erything” 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 likeli-
hood of confusion between two marks, as we address below.
See infra, at 161. But few cases would even get to the
likelihood-of-confusion inquiry if all expressive content trig-
                   Cite as: 

599 U. S. 140

 (2023)           159

                      Opinion of the Court

gered the Rogers flter. In that event, the Rogers exception
would become the general rule, in confict with courts' long-
standing 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 frst 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 trade-
mark owners.” Tam, 582 U. S., at 252 (Kennedy, J., concur-
ring in part and concurring in judgment); see Friedman v.
Page Proof Pending Publication
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 espe-
cially clear rendering: “[T]he trademark law generally pre-
vails over the First Amendment” when “another's trademark
(or a confusingly similar mark) is used without permission”
as a means of “source identifcation.” 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 in-
quiry 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 inter-
est in free expression.
                              B
  Here, the District Court correctly held that “VIP uses its
Bad Spaniels trademark and trade dress as source identifers
160 JACK DANIEL'S PROPERTIES, INC. v. VIP PRODUCTS LLC

                          Opinion of the Court

of its dog toy.” See App. to Pet. for Cert. 105a. In fact,
VIP conceded that point below. In its complaint, VIP al-
leged 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 repre-
sented 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 146–147.)
   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 150. And second, there
Page Proof Pending Publication
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 regis-
ter the names of still other dog toys, including Dos Perros
(#6176781), Smella Arpaw (#6262975), and Doggie Walker
(#6213816). See supra, at 149. 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.

  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 Prod-
ucts, 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).
                    Cite as: 

599 U. S. 140

 (2023)             161

                       Opinion of the Court

   Because that is so, the only question in this suit going for-
ward 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 as-
serts—may properly fgure in assessing the likelihood of con-
fusion. See, e. g., Louis Vuitton Malletier S. A. v. Haute
Diggity Dog, LLC, 

507 F. 3d 252, 265

 (CA4 2007) (Parody
“infuences the way in which the [likelihood-of-confusion] fac-
tors 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 par-
ody 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.
Page Proof Pending Publication
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 frst view”).

                                III
   Our second question, more easily dispatched, concerns
Jack Daniel's claim of dilution by tarnishment (for the link-
age 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 152. 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 “con-
162 JACK DANIEL'S PROPERTIES, INC. v. VIP PRODUCTS LLC

                      Opinion of the Court

vey[s] a humorous message” about Jack Daniel's. Id., at
1175–1176. We need not express a view on the frst step
of that reasoning because we think the second step wrong.
However wide the scope of the “noncommercial use” exclu-
sion, 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 specifcally covers
uses “parodying, criticizing, or commenting upon” a famous
mark owner. § 1125(c)(3)(A)(ii); see supra, at 147. 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 com-
mentary will rescue the alleged dilutor. It will be subject
to liability regardless.
Page Proof Pending Publication
   The problem with the Ninth Circuit's approach is that it
reverses that statutorily directed result, as this case illus-
trates. 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 ex-
pansive view of the “noncommercial use” exclusion effec-
tively nullifes Congress's express limit on the fair-use exclu-
sion 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 identifers, it could not beneft from the fair-
use exclusion for parody. See App. to Pet. for Cert. 105a;
supra, at 151, 159–160. 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 commen-
tary) is excluded from dilution liability.
                  Cite as: 

599 U. S. 140

 (2023)                 163

                   Sotomayor, J., concurring

                              IV
   Today's opinion is narrow. We do not decide whether the
Rogers test is ever appropriate, or how far the “noncom-
mercial 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.
Page
 Justice Proof   Pending
         Sotomayor,            Publication
                    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 infring-
ing 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 care-
fully assess the methodology and representativeness of sur-
veys, 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).
164 JACK DANIEL'S PROPERTIES, INC. v. VIP PRODUCTS LLC

                    Sotomayor, J., concurring

   When an alleged trademark infringement involves a par-
ody, however, there is particular risk in giving uncritical or
undue weight to surveys. Survey answers may refect a
mistaken belief among some survey respondents that all par-
odies require permission from the owner of the parodied
mark. Some of the answers to the survey in this case illus-
trate 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] prod-
uct 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 Publica-
tions, 

28 F. 3d 769

, 772–773, 775 (CA8 1994) (describing a
similar situation). Plaintiffs can point to this misunder-
standing of the legal framework as evidence of consumer con-
fusion. Cleverly designed surveys could also prompt such
Page Proof Pending Publication
confusion by making consumers think about complex legal
questions around permission that would not have arisen or-
ganically 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 confu-
sion about sourcing that is the core concern of the Lanham
Act. See ante, at 147, 153, 156–157. 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 identifcation as the provider of goods
with the needs of society for free communication and discus-
sion.” 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
                  Cite as: 

599 U. S. 140

 (2023)           165

                    Gorsuch, J., concurring

experiences of actual consumers in the marketplace. Courts
should also be attentive to ways in which surveys may
artifcially prompt such confusion about the law or fail to
suffciently control for it.
  Justice Gorsuch, with whom Justice Thomas and Jus-
tice Barrett join, concurring.
  I am pleased to join the Court's opinion. I write sepa-
rately 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 Rog-
ers 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, per-
haps inspired by constitutional-avoidance doctrine? 

Id., at 998

. For another thing, it is not obvious that Rogers is cor-
Page Proof Pending Publication
rect 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 155, and lower courts
should be attuned to that fact.
                           Reporter’s Note

  The attached opinion has been revised to refect the usual publication
and citation style of the United States Reports. The revised pagination
makes available the offcial United States Reports citation in advance of
publication. The syllabus has been prepared by the Reporter of Decisions
Page Proof Pending Publication
for the convenience of the reader and constitutes no part of the opinion of
the Court. A list of counsel who argued or fled briefs in this case, and
who were members of the bar of this Court at the time this case was
argued, has been inserted following the syllabus. Other revisions may
include adjustments to formatting, captions, citation form, and any errant
punctuation. The following additional edits were made:

p. 154, line 4 from bottom, “Mallatier” is changed to “Malletier”