Jack Daniel’s Harmed, but not infringed, by chewy dog toy
The latest ruling in ‘Bad Spaniels’ finds the whiskey brand’s marks were diluted-but not infringed by a dog toy parody, explain Brian Brokate and Jacqueline Alcantara of Gibney, Anthony & Flaherty.
After more than a decade of litigation including a Supreme Court ruling, the legal battle between VIP Products and Jack Daniel’s returned to the U.S. District Court for the District of Arizona on remand.
On January 21, 2025, Judge Stephen McNamee ruled that VIP’s ‘Bad Spaniels’ dog toy did not infringe Jack Daniel’s trademark but did in fact dilute its trademark and trade dress.
First Amendment Arguments
This dispute began in 2014 when Jack Daniel’s demanded that VIP Products stop selling its Bad Spaniels chew toy, which closely resembled a Jack Daniel’s Tennessee Whiskey bottle but included parodic elements such as ‘Old No. 2 on Your Tennessee Carpet’ instead of ‘Old No. 7 Tennessee Sour Mash Whiskey’.
VIP filed a lawsuit seeking judgment that its toy did not infringe or dilute Jack Daniel’s trademark. The district court initially ruled in favor of Jack Daniel’s, finding that the toy violated the Lanham Act by misleading consumers.
However, the Ninth Circuit Court of Appeals later reversed this decision, concluding that the toy was a form of expressive speech protected by the First Amendment under the Rogers v. Grimaldi standard.
On appeal, the case went to the Supreme Court, which narrowly ruled that First Amendment protections under the Rogers test do not apply when a trademark is used as a product identifier. The court also ruled that the noncommercial exclusion for dilution does not shield parody when the use of a mark is source-identifying. The case was sent back to the district court on remand to determine whether VIP’s toy diluted and/or infringed upon Jack Daniel’s trademark.
Trademark Dilution
Under the Trademark Dilution Revision Act (TDRA), dilution occurs when a well-known mark’s distinctiveness or reputation is likely to be weakened or harmed by another mark. While there are two types of dilution, the court discusses dilution by tarnishment which the TDRA further defines as “association arising from the similarity between a mark and a famous mark that harms the reputation of the famous mark”. In proving tarnishment, Jack Daniel’s must prove that their mark is in fact famous, that VIP’s mark is similar, and VIP’s use of their mark is likely to cause negative associations that can harm the reputation of Jack Daniel’s famous mark.
Jack Daniel’s argued that VIP’s toy tarnished its brand by linking it to dog waste-related humor. The court considered:
- Jack Daniel’s widespread recognition, including but not limited to having sold millions of cases over decades;
- The nearly identical design of VIP’s toy, which mimicked Jack Daniel’s bottle shape, font, and color scheme; and
- The potential negative brand association due to the product’s pet-related parody.
The court ultimately ruled in Jack Daniel’s favor on the dilution claim, determining that VIP’s parody harmed the whiskey brand’s image.
A Clear Parody
To establish trademark infringement, Jack Daniel’s needed to prove distinctiveness, non functionality, and likelihood of confusion between the two marks. The court previously ruled as a matter of law that Jack Daniel’s trademarks are distinctive and non-functional, therefore on remand, the district court only focused on ‘likelihood of confusion’. As the Supreme Court ruled, while parody is relevant in assessing confusion, it does not override the Lanham Act when a trademark is used as a product identifier.
Therefore, the district court reviewed other parody-related trademark cases, including Louis Vuitton Malletier v. Haute Diggity Dog. After evaluating parody laws, the court determined that VIP’s toy was a clear parody and not an attempt to mislead consumers into believing it was an official Jack Daniel’s product.
The court applied the Sleekcraft factors to assess likelihood of confusion. While many factors favored Jack Daniel’s, the court ruled that VIP’s intent to parody outweighed them, meaning Jack Daniel’s failed to prove infringement by a preponderance of the evidence.
Key Takeaways
The court ultimately ruled that VIP’s toy diluted Jack Daniel’s trademark by associating it with pet waste humor-however, it did not infringe Jack Daniel’s trademark, as the product was a legally protected parody that did not significantly mislead consumers.
This ruling clarifies the difference between dilution and infringement, demonstrating that parodies may not confuse consumers but can still harm a brand’s reputation. It also signals that companies should be cautious when parodying well-known trademarks, as courts may still find dilution even if there is no infringement.