Applying the Rogers test: A step too far?
More than three decades ago, silver screen legend Ginger Rogers unwittingly gave her name to a landmark legal doctrine aimed at balancing trademark rights and free speech rights when it comes to ‘expressive works’.
Now, the Rogers test has led to a chasm in opinion over its application in trademark and copyright ligation with some, including the International Trademark Association (INTA), arguing that the courts have extended its boundary too widely to the detriment of rights owners.
Others hold that the courts haven’t gone far enough in applying the test to ensure freedom of expression under the First Amendment.
This debate came to a head in April when shoemaker Vans sued artists’ collective MSCHF, after it produced a limited-edition sneaker that drew on the trade dress of a Vans sneaker, prompting the plaintiff to invoke Rogers in its defence.
The US District Court for the Eastern District of New York granted Van's request for a temporary restraining order and preliminary injunction, leading MSCHF to appeal and a clamour for greater clarity when it comes to applying the test.
INTA’s amicus brief
Last week, the INTA filed an amicus brief in Vans v MSCHF underscoring the need for a better definition of expressive works.
Vijay Toke, partner at Rimon Law, who worked on the brief, told WIPR that the move was ultimately aimed at protecting trademark rights.
“We wanted to offer a definition of what an expressive work is, as that has never really been clearly defined,” he explains.
“Because companies are claiming that more and more types of products are expressive, INTA believed it necessary to provide a definition of an ‘expressive work’ that will give litigants and courts more certainty as to the kinds of cases in which Rogers applies and limit its application,” says Toke.
According to INTA, the deferential test for “expressive works” set forth in Rogers v Grimaldi, should only apply where the expression cannot be removed from the product without it ceasing to be the same product, ie, that the expression is conceptually inseparable from the product.
This means that Rogers should not be applied to any commercial product merely alleged to have some “expressive” quality, as this risks the erosion of important protections for brand and trademark owners.
“If courts increasingly apply Rogers to ordinary consumer products, it will make it very difficult, if not impossible, for trademark owners to enforce their rights against any ordinary consumer products that incorporate their marks where the seller claims that the products comment on the trademark owners,” warns Toke.
The origins of Rogers
In his view, part of the problem is that the test established by Rogers v Grimaldi applied to a completely different scenario: a dispute over the title of a movie.
Back in 1989, Rogers lost her infringement case against an Italian film studio over the film “Ginger and Fred”, centring on a cabaret duo who imitated her iconic dancing partnership with Fred Astaire.
This case consequently established the Rogers test for protecting uses of trademarks that touch on intellectual freedom issues, as the court ruled that trademark law “should not bar a minimally relevant use of a celebrity's name in the title of an artistic work where the title does not explicitly denote authorship, sponsorship, or endorsement by the celebrity or explicitly mislead as to content”.
Ever since, courts have subsequently applied Rogers to other types of expressive works—and to the content of those works as well as their titles.
“Historically, courts have followed the implicit instruction from Rogers that the test only applies to cases in which traditionally artistic or expressive works—like movies, television, and art—incorporate another’s trademark,” says Toke.
“But increasingly, companies selling ordinary commercial products incorporating others’ trademarks have claimed that because their products contain expression, Rogers should apply to trademark infringement claims brought against them.”
“The Rogers test applied to the title of a movie. And if you took ‘expression’ out of a movie, then you'd have no movie. The same applies to a painting or sculpture. But if you took away the expression from a shoe, you would still have a shoe.”
The Ninth Circuit in particular, he explains, has consistently expanded the reach of Rogers when applying the test to ordinary commercial products.
In VIP Products v Jack Daniel’s Properties (2022), the Ninth Circuit applied Rogers to a dog toy manufacturer’s take-off on a Jack Daniel’s bourbon bottle, leading to a ruling that the disputed product did not infringe the whiskey maker’s trademarks.
This month, the court ruled in favour of Disney in a dispute with Diece-Lisa Industries, which had alleged that the entertainment company had infringed by depicting the “Lots-O’-Huggin’ Bear” trademark in the movie “Toy Story 3” and by selling merchandise depicting Lotso.
“In the Jack Daniels case, the Ninth Circuit took the test to an extreme, applying Rogers to a dog toy. And again in the case against Disney, it looks like the defendant in that case was selling products that incorporated the trademark owner’s mark,” says Toke.
“If you allow a Rogers analysis in any situation where a defendant argues that its product is protected by free expression then you essentially insulate many from liability for infringing conduct.”
First Amendment protections
The Rogers test is also stoking controversy in relation to non-fungible tokens (NFTs).
Hermès’ dispute with Mason Rothschild, who created fuzzy images of the Hermès Birkin handbag and minted them as MetaBirkin NFTs, will explore the test’s scope.
Last month, the court concluded that the Rogers test applies in the case, at least in part, to the trademark infringement analysis of Rothschild’s activities.
But now the Vans case, according to Toke, offers an opportunity for the courts to rectify the confusion that has arisen since the test was first unveiled.
“Similarly to the dog toy manufacturer in Jack Daniels, in this case, MSCHF argued that its shoes, which incorporated an alleged caricature of an iconic Vans shoe model and its associated trade dress, were expressive works to which Rogers should apply,” says Toke.
“Given the Ninth Circuit’s recent precedent in Jack Daniels, the case presents an opportunity for the Second Circuit to confirm that Rogers does not apply to ordinary consumer products.”
The Vans case is one more in a series of recent cases struggling with the proper application of First Amendment protections in the trademark context, chimes Julia-Anne Matheson, partner at Potomac Law.
“In this case, the question is to what extent we should not only tolerate but indeed reward those, like MSCHF, whose business model/product offerings are intentionally parasitic and/or derivative,” she explains.
MSCHF calls its products a “series of expressive works using shoes as a medium for its art.” But Matheson argues this rationale implies that the new market for NFTs, or any object, whether mass produced or not, can be “ripe for commentary through artwork.”
“This premise essentially eviscerates trademark protections except in the most egregious situations—namely, in circumstances where use of the trademark is ‘explicitly misleading’,” she notes.
‘Custom sneaker culture’
But several parties have diverged from this standpoint, submitting briefs in favour of the MHSCF’s defence of its “custom sneaker culture” understood by consumers to be driven by artistic expression.
The Authors Alliance argues that the Second Circuit should reinforce a clear framework for courts to “dispose of unconstitutionally oppressive trademark suits”.
In its brief, the alliance argued that: “[t]rademark law does not give brand owners the right to control depictions of, or comments on, their brands. Nor can it. The First Amendment guarantees artists’ right to depict the world as they see it and to respond in the marketplace of ideas to the inescapable corporate brand messages by which we are bombarded every day, virtually everywhere we look.”
Rebecca Tushnet, professor of the First Amendment at Harvard University, was in accord with this opinion in her own amicus brief.
“People do routinely use clothes to send specific messages, and courts should be more careful about recognising that fact and applying more careful scrutiny to trademark claims against such communicative uses,” she says.
Tushnet adds that she is “hopeful” that courts will now recognise that the First Amendment applies to all laws, including trademark laws.
“The courts are being asked to reconcile First Amendment doctrine— which is very clear that expression is expression, whether it is on a T-shirt or a placard—with trademark doctrine— which ordinarily focuses on what is called "commercial speech," speech that proposes a commercial transaction, like a label or ad.”
If such a ruling emerges, fears that it will erode trademark rights are greatly overstated, she notes.
“This doesn't mean that trademarks would be unenforceable against noncommercial speech; it just creates a higher bar and a focus on fraudulent conduct rather than on expansive theories of possible confusion that don't necessarily harm consumers,” she argues.
Toke, however, strongly disagrees. “Of course, fraudulent conduct is the most egregious form of infringement. But that goodwill that trademark owners build is something valuable, and when another is able to syphon off some of that goodwill, then a brand owner should be able to take action,” he insists.
Strong protection
The Vans case ultimately illustrates the fine line between arguments alleging free riding and those upholding free expression, according to trademark expert Anne Gilson LaLonde, author of Gilson on Trademarks, who predicts a victory in favour of the parties supporting the latter camp.
“The First Amendment provides strong protection against liability where the defendant’s alleged infringement is an “expressive work,” she explains.
This is a very broad category, she explains and, depending on its understanding of the context of modern sneaker design and art, the court may be “quite reluctant” to find that the defendant’s shoe is not expressive.
“If the Second Circuit does find that the defendant’s shoes are expressive works, the plaintiff must meet the high standard of showing that its mark has no artistic relevance to the defendant’s goods and that the defendant’s goods are not explicitly misleading,” she explains.
“The big question here would centre on explicit misleadingness, for which the Second Circuit requires a “particularly compelling showing” of confusion.”
Matheson agrees that the ongoing furore over Rogers underscores the need for the courts to walk a tightrope between a desire to protect property rights, business investment, business reputation and goodwill while, at the same time, encouraging innovation and constant evolution of market offering.
“The question is where do we draw the line? Should general consumer products be entitled to the same/First Amendment protections as more traditional ‘expressive’ works. And what constitutes a ‘general consumer product’”? She asks.
And while the wrangling continues over a decades-old legal doctrine named after a Hollywood icon, parties are in agreement on one point: answers to these complex questions are long overdue.
Today’s top stories:
