After a decade of litigation and a pivotal Supreme Court ruling from 2023, the legal battle between Jack Daniel’s and VIP Products has taken yet another turn, this time back in favor of Jack Daniel’s. On remand from the Supreme Court in the case VIP Products LLC v. Jack Daniel’s Properties Inc., the U.S. District Court for the District of Arizona issued an amended order on January 21, 2025, finding that VIP’s “Bad Spaniels” dog toy is not likely to cause consumer confusion with Jack Daniel’s whiskey brand and trade dress, thereby not constituting trademark infringement. However, the district court found that it nevertheless dilutes the fame and distinctiveness of the whiskey maker’s reputation, thereby still running afoul of the Lanham Act’s anti-dilution provisions. The amended order follows the Supreme Court’s decision ending the application of the more liberal Rogers First Amendment test in trademark cases involving expressive works used as source identifiers. In doing so, while finding that the parody of the “Bad Spaniels” dog toy decreased the likelihood of confusion with Jack Daniel’s by modifying the analysis of certain factors in a light more favorable to VIP, the district court ultimately found VIP’s parody of the famous whiskey brand to be a double-edged sword that contributed to finding dilution by tarnishment.
Bad Spaniels I & II: Different Tests Reach Different Results for Parody Chew Toy
In 2014, VIP released a rubber dog chew toy called “Bad Spaniels,” designed to imitate Jack Daniel’s iconic whiskey bottle. The “Bad Spaniels” toy closely mimicked key elements of Jack Daniel’s trade dress, including its label design, bottle shape, and fonts, but replaced text with humorous phrases such as “The Old No. 2 on Your Tennessee Carpet” and “43% Poo by Vol.” In response to an objection from Jack Daniel’s, VIP filed suit for a declaratory judgment that the “Bad Spaniels” dog toy did not infringe or dilute Jack Daniel’s trademark rights in its black label whiskey bottle, to which Jack Daniel’s counterclaimed for trademark infringement and trademark dilution under the Lanham Act and related Arizona state laws.
Following a bench trial, in 2018, the district court initially ruled in favor of Jack Daniel’s under both counterclaims, finding both trademark infringement and dilution by VIP, and issued a permanent injunction against the sale of the dog toy. On appeal in 2020, however, the Ninth Circuit reversed the district court’s judgement on the issue of dilution and vacated the judgment on the issue of consumer confusion, holding that the “Bad Spaniels” dog toy was an expressive work that was entitled to additional First Amendment protection under a more liberal test for analyzing trademark infringement known as the Rogers test, originating from the case Rogers v. Grimaldi. In applying Rogers on remand, the district court then granted summary judgment in favor of VIP under both the infringement and dilution counterclaims. Jack Daniel’s appealed, and the Ninth Circuit affirmed.
Reaching the Supreme Court, the case took another turn in 2023 when the Court vacated the Ninth Circuit’s decision, unanimously ruling that the Rogers test does not apply in cases when a trademark is used as a source identifier, rather than as a purely artistic work. As a result, the Supreme Court remanded the case for the district court to reconsider Jack Daniel’s counterclaims under traditional trademark principles.
Bad Spaniels III: A Split Decision on Remand, but a Win Nonetheless for Jack Daniel’s
District Court Finds No Likelihood of Confusion for Trademark Infringement…
The traditional test applied for determining trademark infringement is whether there is a likelihood of consumer confusion between the use of the junior mark with the senior user’s mark. To assess whether there is a likelihood of confusion, each circuit applies its own multi-factor balancing test by weighing and balancing the evidence against similar lists of non-exclusive factors, such as the similarity of the marks, the relatedness of the goods, the strength of the plaintiff’s mark, evidence of actual confusion, the defendant’s intent, among others. In this case, while overruling the application of the Rogers test and ordering the case to be reconsidered under the traditional consumer confusion test, the Supreme Court had posited that parody use of a trademark may still properly factor into the likelihood of confusion analysis.
On remand, the district court emphasized that parody plays a key role in assessing the likelihood of confusion, as a successful parody must both evoke the original mark and create contrasts through humor that clarify it as not the original. In that regard, the district court considered the “Bad Spaniels” chew toy as a successful parody. Under the Ninth Circuit’s eight-factor Sleekcraft test, the district court modified its analysis to account for parody, causing three factors—similarity of marks, strength, and intent—to weigh against confusion and in favor of VIP.
In particular, under the similarity factor, while the district court noted that mark similarity is typically a strong factor in finding a likelihood of confusion, it also recognized that some level of resemblance is necessary for a parody to be effective. The court found that the “Bad Spaniels” dog toy borrowed key elements of Jack Daniel’s trade dress, but introduced humorous contrasts, which signaled to consumers that it was a parody rather than an actual Jack Daniel’s product, thereby decreasing the likelihood of confusion. Similarly, under the strength factor, the court found that the fame of Jack Daniel’s mark and trade dress, rather than increasing the likelihood of confusion, actually made it easier for consumers to immediately identify the parody while distinguishing the “Bad Spaniels” dog toy from the whiskey maker. The intent factor also weighed in VIP’s favor, despite VIP deliberately imitating Jack Daniel’s branding, as the court recognized that this was done for humor rather than deception, reinforcing that consumers were more likely to be able to distinguish the parody from the Jack Daniel’s brand.
Given how those three factors were analyzed differently in a case of parody, which would otherwise have tended to favor Jack Daniel’s against a non-parody use, the district court found that consumer confusion was unlikely, and thus that VIP’s “Bad Spaniels” did not infringe on Jack Daniel’s trademark or trade dress rights.
…But Still Finds Trademark Dilution by Tarnishment
Where parody helped VIP in defending against Jack Daniel’s trademark infringement claim, however, it had the reverse effect under the trademark dilution claim. Under the dilution claim, the district court found that Jack Daniel’s met the threshold requirement of establishing that its trademark and trade dress were famous before VIP first released the “Bad Spaniel’s” dog toy, citing Jack Daniel’s extensive advertising, its status as the best-selling whiskey in the U.S. since 1997, and over a century of continuous use. In assessing the similarity of the uses, the court also found that VIP closely imitated Jack Daniel’s trade dress in nearly every aspect, making it unmistakably reminiscent of Jack Daniel’s branding.
To determine whether the parody caused reputational harm to Jack Daniel’s, the district court weighed expert testimony from both parties. On one hand, Jack Daniel’s expert opined that associating a product meant for human consumption with dog feces created strong negative brand perceptions, citing empirical research on consumer reactions to unsavory associations. VIP’s expert, on the other hand, conducted focus groups, which found no evidence of significant reputational harm. The court, however, dismissed the study as flawed since participants were explicitly told the toy was a parody, which could have influenced their responses. Ultimately, the district court credited Jack Daniel’s expert, finding that “Bad Spaniels” was likely to tarnish Jack Daniel’s fame and reputation, and thus ruling in favor of Jack Daniel’s on its dilution claim.
The Irreverent Juxtaposition of a Non-Confusing Parody that Is Nonetheless Impermissible
After originally ruling in Jack Daniel’s favor under both the trademark infringement and dilution claims, then reversing course and ruling in VIP’s favor under both claims on a first remand applying Rogers, the district court ultimately reached a split opinion on a second remand from the Supreme Court, finding dilution by tarnishment but no trademark infringement. In acknowledging the seeming paradox of the decision, the district court noted that “the qualities on which ‘Bad Spaniels’ runs afoul of the Lanham Act’s cause of action for dilution by tarnishment are the very qualities that help ‘Bad Spaniels’ to prevail on a trademark infringement claim, as they are the qualities that create contrasts with Jack Daniel’s mark by way of irreverent juxtaposition.” The district court added:
“Bad Spaniels” finds itself in the category of a non-confusing parody product that is nonetheless impermissible under the Lanham Act’s cause of action for tarnishment. This divergent result arises because the considerations under the Lanham Act’s cause of action for trademark infringement and trademark dilution are distinct… Thus, a parodic product that does not create confusion as to its source may still, by way of the irreverent message qualifying it as a parody in the first instance, create negative associations and reduce the value of the famous mark to its owner. Such is the case here.
The district court’s amended order demonstrates that, even without applying the more liberal Rogers test after the Supreme Court’s 2023 ruling, parody remains an important consideration in trademark infringement claims, which can change the analysis and weighing of certain factors to potentially decrease the likelihood of consumer confusion by adding humorous contrasts with the senior user’s mark. At the same time, in adding such humorous contrasts, parody products face a delicate balancing act of not imitating so closely or in such a way that runs afoul of the Lanham Act’s anti-dilution protections for famous marks, which are those most prone and enticing to parody. The distinctions drawn by the court from typical, non-parody cases also offer useful insights for assessing the strengths and weaknesses of different Lanham Act claims for both sides in trademark cases involving parody moving forward.
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