Ninth Circuit Rejects Jack Daniel’s Tarnishment Claim Against “Bad Spaniels” Parody
VIP Products, LLC v. Jack Daniel’s Properties, Inc., No. 25-2027 (9th Cir. Aug. 4, 2026)
The Ninth Circuit has again ruled in favor of VIP Products in its long-running dispute with Jack Daniel’s over the “Bad Spaniels” dog toy, this time rejecting Jack Daniel’s claim for trademark dilution by tarnishment. The court vacated the permanent injunction entered in Jack Daniel’s favor and remanded for entry of judgment for VIP. [1]
The decision provides important guidance on the proof required under the Trademark Dilution Revision Act (“TDRA”). The Ninth Circuit held that fame, similarity, and reputational harm must be evaluated with respect to the particular marks at issue. It also confirmed that parody may remain relevant to whether tarnishment is likely even when the defendant uses the parody as a source identifier and therefore cannot rely on the TDRA’s statutory parody exclusion.
Background
VIP introduced Bad Spaniels in 2014 as part of a line of novelty dog toys parodying beverage brands. The toy evokes a Jack Daniel’s whiskey bottle but substitutes “Bad Spaniels” for “Jack Daniel’s,” “Old No. 2” for “Old No. 7,” and “Tennessee Carpet” for “Tennessee Whiskey,” along with phrases such as “43% POO BY VOL.” and “100% SMELLY.” [2]
After years of litigation, the U.S. Supreme Court held in 2023 that the Rogers test for expressive works does not apply when a defendant uses the challenged trademark as a designation of source for its own goods. The Court also held that VIP could not rely on the TDRA’s statutory noncommercial-use exclusion because VIP used the challenged marks as source identifiers. [3] On remand, the district court found no likelihood of confusion but held VIP liable for dilution by tarnishment and entered a permanent injunction. [4]
The Ninth Circuit’s Tarnishment Framework
The Ninth Circuit held that a plaintiff asserting dilution by tarnishment must prove that its mark is famous, the challenged junior mark is similar to that famous mark, and the junior mark creates a mental association with the famous mark that is likely to damage its reputation. [5] The plaintiff bears the burden of proving each element. [6]
That formulation proved decisive because the district court had treated Jack Daniel’s branding too collectively. The Ninth Circuit instead required a mark-specific analysis.
Fame Must Be Established for Each Asserted Mark
Jack Daniel’s owns numerous trademarks and trade dress elements associated with its whiskey. The Ninth Circuit concluded, however, that the evidence established statutory fame only for the JACK DANIEL’S mark and Jack Daniel’s registered trade dress. The record did not independently establish that OLD NO. 7 was famous under the TDRA. [7]
The court emphasized that the TDRA does not permit one mark to “borrow” the fame of another. Although Jack Daniel’s presented substantial evidence concerning its overall brand, including extensive advertising, billions of dollars in sales, long-standing use, and high consumer awareness, the district court had not separately analyzed whether OLD NO. 7 itself satisfied the statutory fame standard. [8]
That mark-specific approach also limited the relevance of some of the toy’s most provocative language. For example, “43% POO BY VOL.” could not independently support Jack Daniel’s dilution theory because the corresponding alcohol-by-volume language on Jack Daniel’s product was not itself a famous trademark. [9]
Tarnishment Requires Likely Reputational Harm
The district court had concluded that Bad Spaniels created a negative association by linking Jack Daniel’s whiskey with dog feces. The Ninth Circuit held that this was insufficient.
The court recognized that context may matter and that a junior mark used with poor-quality, pornographic, or illegal products may, in appropriate circumstances, support a tarnishment claim. But the plaintiff must still prove that the association is likely to harm the reputation of the particular famous mark. [10] As the court explained through its reliance on Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., an unpleasant association says relatively little by itself about whether consumers perceive the famous mark’s reputation as damaged. [11]
Jack Daniel’s expert evidence did not bridge that gap. Dr. Itamar Simonson relied on general consumer-psychology research concerning the disgust generated when food or beverages are associated with defecation. He did not conduct a study addressing consumer reactions to Bad Spaniels itself. [12] The Ninth Circuit concluded that his testimony did not establish that consumers exposed to a scatological dog-toy parody were likely to develop a diminished view of the JACK DANIEL’S mark or its famous trade dress. [13] The court characterized the contrary inference as “pure conjecture.” [14]
The court did not hold that surveys or expert testimony are required in every dilution case. Rather, where a plaintiff elects to rely on such evidence, the evidence must meaningfully connect the challenged use to likely reputational harm to the particular famous mark. [15]
Parody Remains Relevant
The Ninth Circuit also clarified the continuing role of parody following the Supreme Court’s 2023 decision.
Although VIP could not invoke the TDRA’s statutory parody exclusion because it used the challenged marks as source identifiers, the Ninth Circuit held that parody remains relevant to whether the plaintiff has actually proven tarnishment. [16] Relying on Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, Hormel Foods Corp. v. Jim Henson Productions, Inc., and related cases, the court explained that a successful parody simultaneously evokes the original and signals that it is different and is making fun of the original. [17]
That distinction may affect whether consumers transfer the parody’s negative characteristics to the famous brand or simply understand them as part of the joke. The court found that Jack Daniel’s expert analysis failed to account for this feature of Bad Spaniels and described that omission as a “critical misstep.” [18]
The decision therefore distinguishes between parody as a statutory exclusion from liability and parody as part of the factual circumstances relevant to whether dilution has been proven.
Practical Implications
The decision reinforces that dilution by tarnishment is a narrow remedy, even for owners of exceptionally strong brands. Trademark owners should identify precisely which asserted marks independently qualify as famous and develop evidence showing likely reputational harm to those marks, rather than relying on the strength of the overall brand or on an undesirable association alone. Defendants, in turn, may focus on whether the plaintiff has proved fame for each asserted mark, whether the allegedly tarnishing junior matter corresponds to that mark, whether the evidence demonstrates reputational harm rather than mere association, and whether parody affects consumer perception.
Conclusion
The Ninth Circuit held that Jack Daniel’s failed to establish a likelihood of dilution by tarnishment, vacated the permanent injunction, and remanded for entry of judgment in VIP’s favor. [19] Because the case could be resolved on statutory grounds, the court declined to reach VIP’s constitutional challenge to the TDRA’s tarnishment provision. [20]
The broader significance of the decision lies in its insistence on a mark-specific and evidence-based tarnishment analysis. A famous-brand owner must do more than demonstrate that a defendant deliberately evokes its brand in an offensive, irreverent, or unflattering context. At the same time, the decision confirms that parody continues to matter after the Supreme Court’s Jack Daniel’s ruling, even where it does not provide a statutory exclusion from liability.
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Endnotes
1. VIP Products, LLC v. Jack Daniel’s Properties, Inc., No. 25-2027, slip op. at 2-3, 28 (9th Cir. Aug. 4, 2026) (vacating permanent injunction and remanding for entry of judgment for VIP).
2. Id. at 8-9.
3. Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. 140, 153, 161-63 (2023), as discussed in VIP Products, No. 25-2027, slip op. at 11.
4. VIP Products, No. 25-2027, slip op. at 12.
5. Id. at 7; see also 15 U.S.C. § 1125(c)(1), (2)(C).
6. VIP Products, No. 25-2027, slip op. at 14-15, 27-28.
7. Id. at 15, 18.
8. Id. at 17-18.
9. Id. at 15 n.3.
10. Id. at 20.
11. Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 110 (2d Cir. 2009), cited in VIP Products, No. 25-2027, slip op. at 23.
12. VIP Products, No. 25-2027, slip op. at 20-22.
13. Id. at 22-23.
14. Id. at 23-24.
15. Visa International Service Ass’n v. JSL Corp., 610 F.3d 1088, 1091 (9th Cir. 2010), discussed in VIP Products, No. 25-2027, slip op. at 28 n.8.
16. Jack Daniel’s, 599 U.S. at 161-63; VIP Products, No. 25-2027, slip op. at 24-25 & n.6.
17. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 266-67 (4th Cir. 2007); Hormel Foods Corp. v. Jim Henson Productions, Inc., 73 F.3d 497, 503, 508 (2d Cir. 1996), cited in VIP Products, No. 25-2027, slip op. at 25-26.
18. VIP Products, No. 25-2027, slip op. at 27.
19. Id. at 28.
20. Id. at 28 n.9.