Zachary Shufro


Trademark law limits the extent and manner to which individuals can use a surprisingly large percentage of common words in the English language. Indeed, as one empirical study of trademark registrations revealed, “when we use our language, nearly three-quarters of the time we are using a word that someone has claimed as a trademark.” Because trademark law grants a negative right to the mark-holder—that is to say, a right to prevent others from using that trademarked word in certain manners and contexts—it inherently conflicts with the First Amendment. In assessing the resulting discord from such a conflict, courts have several measures to 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. Over the past thirty years, this test has outgrown the relatively narrow confines in which it was originally envisioned by the Second Circuit Court of Appeals, and particularly in the Ninth Circuit, its progeny has taken on a life of its own. 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. As one Ninth Circuit panel stated in a recent opinion, “[i]t is said that bad facts make bad law”;1 however, VIP Products proves that the inverse can also be true, and that bad legal analysis can defeat a strong factual scenario. The implications of this decision in future cases remains unclear, but this Article considers the pernicious consequences of an even-broader application of the Rogers test in the Ninth Circuit moving forward.