Based on a True Story: The Ever-Expanding Progeny of Rogers v. Grimaldi

Abstract

Trademark law limits the extent and manner to which individuals can use a surprisingly large percentage of common words in the English language. In assessing the resulting discord from such a conflict, a court has several measures by which it can determine the metes and bounds of the First Amendment’s priority over trademark law; in the case of an expressive or artistic work which uses the trademark of another (or the name of an individual), one such test that has developed is the Rogers test, named for a 1989 lawsuit involving the actress and dancer Ginger Rogers. This article examines the most recent development in the ever-expanding ambit of the Rogers test: the Ninth Circuit’s recent decision in VIP Products LLC v. Jack Daniel’s Properties, Inc. First, this article summarizes the policy goals and purposes of trademark law, provides a brief overview of the Lanham Act’s false endorsement right of action and of trademark dilution, and synopsizes both Rogers v. Grimaldi and the development of the Rogers test in the Ninth Circuit. It then analyzes the Jack Daniel’s v. VIP Products district court and appellate decisions, and considers the consequences of the Ninth Circuit’s decision. In its opinion, the Ninth Circuit not only stretched the purpose of the Rogers test to a breaking point, but also improperly relied upon the test’s basic premise as grounds to incorrectly dispose of a claim for trademark dilution, despite the different standards, purposes, and policy goals of trademark infringement and trademark dilution statutes; the consequences of such precedent going forward are yet to become clear. Finally, the article concludes by considering how to remedy the ever-increasing scope of the Rogers test in Ninth Circuit jurisprudence, and reflects on the potential effects that VIP Products could have on future trademark false endorsement claims. As a whole, the Ninth Circuit’s decision in VIP Products is distinguished by its overly expansive view of the Rogers test and its misunderstanding of the fragile balance between the First Amendment and trademark dilution law. As the Supreme Court has denied certiorari, there is little to no chance to correct the faulty decision itself. Were the Ninth Circuit to reform its understanding of Rogers to conform with its restricted application in its home circuit, the Second Circuit, perhaps some of the more pernicious consequences of VIP Products could be avoided. Nevertheless, short of the panel’s decision sua sponte to issue an amended opinion, the consequences of this case are likely to be widespread in Ninth Circuit jurisprudence, and will significantly curtail the trademark rights of mark holders for years to come.