“In Jack Daniel’s Properties, Inc. v. VIP Products LLC,¹ the Supreme Court resolved a split among the federal circuit courts of appeal—most pronounced where the Second and Ninth Circuits were concerned—as to whether the pro-defendant test for liability for trademark infringement and unfair competition first set forth in Rogers v. Grimaldi² applied in cases challenging uses by defendants that are source-identifying in nature. The Court answered that question in the negative, holding that “[w]hen a mark is used as a mark (except, potentially, in rare situations), the likelihood-of-confusion inquiry does enough work to account for the interest in free expression.”³ In doing so, the Court expressly tempered its holding by observing that “[w]e do not decide whether the Rogers test is ever appropriate . . . . On infringement, we hold only that Rogers does not apply when the challenged use of a mark is as a mark.”⁴ At the same time, a concurring three-Justice bloc led by Justice Gorsuch commented both that “it is not entirely clear where the Rogers test comes from,”⁵ and “it is not obvious that Rogers is correct in all its particulars . . . .”⁶

Jack Daniel’s therefore leaves open the question of Rogers’s viability in cases involving artistic or expressive works in which allegedly infringing uses are not designations of source for defendants’ own goods and services, a scenario underlying many (and possibly most) applications of Rogers. Moreover, to the extent the Rogers test does remain viable in that context, another critical circuit split exists between the Second Circuit and the Ninth Circuit regarding the proper application of Rogers’s second prong, namely, the inquiry into whether a defendant’s use is explicitly misleading. Jack Daniel’s therefore cannot be read to resolve all outstanding Rogers-related issues.

This article addresses the proper application of the second prong of the Rogers test. It argues that the constitutional-avoidance doctrine, which requires interpretations of ambiguous statutes in a manner preventing conflicts with the Constitution,⁷ allows courts to accommodate First Amendment considerations by requiring heightened showings of infringement and unfair competition as part of their consideration of that prong. The statutory causes of action for those torts found in Sections 32(1) and 43(a) of the Lanham Act⁸ identify likely confusion as the test for liability,⁹ and it is undisputed that plaintiffs asserting them bear the burden of proof regarding that circumstance. Neither statute, however, expressly requires application of a particular standard of proof. In other contexts, the Supreme Court has mandated use of the clear-and-convincing-evidence standard of proof to avoid difficult constitutional issues, and that mandate can and should apply with equal force in litigation under the Act. In addition, and as set forth below and suggested by Justice Gorsuch’s concurring opinion in Jack Daniel’s, the Act’s unambiguous statutory text necessarily renders the Second Circuit’s approach to constitutional avoidance in litigation under Sections 32(1) and 43(a) more appropriate than that of the Ninth Circuit.”