Overview: A federal appeals court has reversed a lower court’s dilution ruling in the decade-long trademark dispute between Jack Daniel’s whiskey and VIP’s “Bad Spaniels” parody dog toy. The Ninth Circuit initially held that Jack Daniel’s failed to prove the humorous dog toy tarnished its famous brand, viewing the parody as a noncommercial fair use protected by the First Amendment. U.S. Supreme Court reversed the Ninth Circuit decision in 2023 (Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. 140), ruling against the expressive message defense for the dog toy parody regarding trademark dilution.
The Full Story
Multiple decisions ensued over a decade at every level of the federal judiciary. The District Court for the District of Arizona held for Jack Daniel’s on both claims after a four-day trial, resulting in a permanent injunction. VIP appealed to the U.S. Court of Appeals for the Ninth Circuit, which vacated the District Court’s decision on infringement and reversed the decision on dilution. On remand, the District Court granted summary judgment to VIP on both the infringement and dilution claims.
The Supreme Court took the case at Jack Daniel’s request. It reversed the decision of the lower court in Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023). The Supreme Court began by saying, “This case is about dog toys and whiskey, two items seldom appearing in the same sentence.” In its latest decision, VIP Products, LLC v. Jack Daniel’s Properties, Inc., Appeal No. 25-2027 (9th Aug. 4, 2026), the Court of Appeals again reversed the District Court’s decision, ordering the injunction vacated.
What This Means
The Supreme Court limited the application of this infringement defense in cases such as this. Although some Justices questioned the viability of the Rogers test, the Court unanimously held that the Rogers test does not apply where the challenged use of a mark is “as a mark” to indicate the source of the defendant’s own goods. The Supreme Court nevertheless held that a trademark’s “expressive message,” particularly a parodic one, may properly figure in assessing likelihood of confusion. Dilution limitation: holding that the statutory non-commercial “fair use” dilution exclusion expressly “does not shield parody or other commentary when its use of a mark is similarly source-identifying.”
Consumer Takeaway
The Court of Appeals observed that dilution protects only a famous mark that the general consuming public regards as a “household name.” It ruled that JACK DANIEL’S and the whiskey’s registered trade dress were proved to be famous, but “Old No. 7” was not. The evidence did not sustain the likelihood of dilution claim, given the obvious parody by VIP’s dog toy. The Court of Appeals vacated the District Court’s permanent injunction and ordered judgment entered in favor of VIP.
Source: Read the original article
