Comment by coldpie | Hacker News Reader

Comment by coldpie | Hacker News Reader

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Reading the article, I believe the SCOTUS decision is not making any claim whether the toy violates JD's trademark. Rather, they are deciding that the lower court's ruling that it did not violate was invalid because that court applied a rule that it shouldn't have. So it will probably be re-tried without that rule applied, and a jury (or judge or whoever) will then decide whether it violates under that revised understanding of the law. The argument you're making would be relevant to that trial, not the appeal that SCOTUS just ruled on.

In general, appeals courts such as SCOTUS never decide on the facts of the case. They only determine whether a lower court "screwed up" somehow, and can reverse rulings or offer re-trials if so.

Relevant quotes from the article:

> But in a 9-0 decision, the justices said a precedent known as the Rogers test for assessing the use of trademarks in artistic expression did not apply to VIP's products, reversing a U.S. appeals court

> The Rogers test is "not appropriate when the accused infringer has used a trademark to designate the source of its own goods - in other words, has used a trademark as a trademark," Justice Elena Kagan wrote.

> The whiskey maker will still have to prove VIP's toys are likely to confuse potential customers into thinking it was affiliated with them in order to win its infringement case.

Thanks, this helps clarify it a lot. I went and looked up a few more articles, and I think I still remain confused a bit about the second quote you list -- specifically what it means to use "a trademark as a trademark", as it seems like the decision written by Justice Kagan hinges on this concept.

The term "trademark" is literally a "mark" (identifying symbol) for "trade" (commercial purposes). Kagan's quote is basically saying that the Roger's test only applies when you're using trademarks for noncommercial purposes.

It's not about non-commercial purposes. "Barbie Girl", the song that actually created the Rogers Test to begin with, is definitely a commercial product.

The new decision says that the Rogers Test should only be applied to things that are not in and of themselves trademarks. So, if someone is referencing the Pepsi logo in their movie, or in an advert, or in a painting they are selling, you should apply the Rogers Test to see if that is a violation of the trademark or not.

But if the Pepsi logo (or something that Pepsi claims is too similar to it) is the only one showing up on their beverage packaging, or on the shoes they're selling, or on a T-shirt and all of its labeling, even if that T-shirt is being given away at a charity event and is thus non-commercial - well, then they are using a trademark as a trademark, and now they can't rely on the Rogers test. Instead, they have to be judged on the buyer confusion standard (would a regular person believe they are getting an official Pepsi product when seeing this item, or not?).

To build on your Pepsi example: I could probably sell a chew toy that looked like a bottle of Pepsi with my "Pupsi" look-alike logo and the Rogers Test could be applied, but if I trademarked (officially or via branding) the Pupsi name and infringing logo by say, selling a line of Pupsi-branded pet supplies, it would not. Pepsi would then be able to pursue the "consumer confusion" argument that most people think of in IP/trademark disputes.

The SCOTUS decision is all about shutting down the short-circuit that the lower court applied, now requiring them to go back and decide on the confusion question.

> “Barbie Girl”, the song that actually created the Rogers Test to begin with

The Rogers Test comes from Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which asked whether an Italian film named “Ginger and Fred” infringed a trademark of famous film stars Ginger Rogers and Fred Astaire.

https://en.m.wikipedia.org/wiki/Rogers_v._Grimaldi

Ooops, I misunderstood something in TFA and didn't check myself further... Thanks for correcting me!

> what it means to use "a trademark as a trademark"

The alternative is called “nominative use”, which is to use the mark of another to refer to the other’s goods or services.

For example, a cola manufacturer can write in an advert, “Better than Coca-Cola!” and it does not infringe the Coca-Cola mark, because the name is being used to identify the competitor’s product. If the same company called its own product “Better Coca-Cola”, however, that would be using the trademark as a trademark and it could potentially infringe. (Probably would, in fact.)

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