Lessons Learned from Two Years of Applying (or not Applying) the Rogers Test in a post-Jack Daniel’s v. VIP Products World

In 1989, the Second Circuit set forth a test for balancing trademark rights with the First Amendment rights of creators of artistic works, including in films, television programs, songs, and video games.  Known as the Rogers test, so long as a creator can show that use of a mark is artistically relevant to the work, and there is nothing about the creator’s use that would explicitly mislead consumers into believing an association with a prior trademark, the Lanham Act and its likelihood-of-confusion test do not apply.  Following the Supreme Court’s decision in Jack Daniel’s v. VIP Products, 599 U.S. 140 (2023), however, holding that the Rogers test does not apply when a creator’s use is “as a trademark” (in that case, on a dog toy), exactly how and when the Rogers test continues to apply to traditional creative works is unclear, with different courts reaching opposite conclusions.

The seminar will review all of the post-Jack Daniel’s decisions to find a paradigm for analyzing these types of cases going forward. Attendees will learn about the cases and courts that have applied Jack Daniel’s to disputes involving trademarks and creative works, and analyze essential questions, such as whether series titles are ever subject to the Rogers test. Should attorneys refrain from registering a series title now?  Are titles of single works automatically protected under Rogers? And which party’s “use as a trademark” is relevant, the senior or junior user’s?

This program is designed for any attorney who operates in the entertainment industry and advises on the use of titles or elements within creative works. This program assumes a basic understanding of the Rogers test and is targeted primarily at an advanced audience, but is suitable for all levels.

Learning Objectives:

1. Evaluate the holding of Jack Daniel’s v. VIP Products.
2. Examine how this holding impacts the ongoing application of the Rogers test.
3. Explore how Rogers is being applied to elements of creative works. 
4. Assess how Rogers is being applied to titles of single creative works. 
5. Analyze how Rogers is applied to the titles of a series of creative works.