Two US Trademark Cases Highlight Rogers Test Limits
July 7, 2023
Managing Intellectual Property
There are two recent trademark cases that prove that the Rogers test isn’t necessarily the best indicator as to whether a potential infringement occurred. The Rogers test sets out that a Lanham Act analysis is only relevant to an expressive work if the defendant’s use of the mark isn’t artistically relevant, or it explicitly misleads consumers over the source of the mark.
In one case, the U.S. Supreme Court addressed Diece-Lisa Industries’ trademark lawsuit against Disney where it addressed a dispute over a stuffed bear featured in the movie ‘Toy Story 3’. The Court’s decision came down after it ruled in the Jack Daniel’s v VIP Products case, where the high court said that the Rogers test didn’t apply when the defendant had used its mark as a source identifier.
The second case occurred when a Southern District of New York judge rejected an artist’s request for a new trial over the sales of his ‘MetaBirkin’ non-fungible tokens (NFTs).
Mark Sommers told Managing IP that it will be important in this case [Dice-Lisa Industries v. Disney] whether the court determines that the product at issue is being used as a trademark.
“If it’s being used as a trademark, the Rogers test wouldn’t apply. If it’s not, then the test would apply,” he said.
He notes that there are certainly arguments to be made that when introducing the merchandising of the 'Toy Story 3' character, that it was clearly a brand association with a particular type of toy.
“That’s the issue that the court will be struggling with upon remand.”
