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Yeshiva University Benjamin N. Cardozo School of Law




In Jack Daniel’s v. VIP Products, the Supreme Court announced a bright-line rule: whatever speech protections govern the use of trademarks in artistic works, no such rule applies “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.” Those who engage in “trademark use,” in other words, must face the usual likelihood-of-confusion standard, regardless of whether their use also has expressive dimensions. The Jack Daniel’s defendant conceded that it was engaged in trademark use, so the opinion did not do the hard work of distinguishing between trademark use and non-trademark use. And its failure to do so has begun to wreak havoc in the lower courts. This essay makes three small but hopefully clarifying points to help lower courts apply the rule announced in Jack Daniel’s. First, it examines the relationship between Jack Daniel’s and Rogers v. Grimaldi, which the Court did not repudiate but treated as a prototypical example of non-trademark use. Under Jack Daniel’s, uses of marks in expressive works are not ordinarily trademark uses, contrary to some recent lower court decisions. Second, drawing from hints in Jack Daniel’s, we find that the Court contemplates a bounded notion of trademark use that reflects the language and the normative goals of the Lanham Act. Finally, we close with some suggestions, again drawing on Jack Daniel’s itself, on how to tame the likelihood-of-confusion test to protect expressive speech.


Forthcoming in Cardozo Arts & Entertainment Law Journal

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