Jack Daniel’s Sues Bad Spaniels

Jul 10, 2023 | Law Student Blog,

By Kim Ly, University of Michigan Law School, Juris Doctorate Candidate, 2025

On June 8, 2023, the U.S. Supreme Court released a decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC that clarified the First Amendment parody defense in trademark cases in a way that should benefit brand owners.

VIP Products is a company that manufactures, markets and sells dog chew toys. One of its product lines is called “Silly Squeakers.” Toys from this line usually parody popular beverage brands. Examples include the Dos Perros (compared with Dos Equis), Doggie Walker (Johnnie Walker) and of course, the toy at the heart of this suit—the Bad Spaniels (cf. Jack Daniel’s).

The Bad Spaniels chew toy was designed to look like the Jack Daniel’s Tennessee Sour Mash Whiskey (“Old No. 7 Brand”) bottle. These similarities include the shape of the product, the use of white lettering over a black background and font styles. On the back of the Bad Spaniels toy is a disclaimer that “this product is not affiliated with Jack Daniel’s.”

Well, Jack Daniel’s saw the toy and sued VIP Products for trademark infringement and dilution by tarnishment.

Summary of the Ruling
Jack Daniel’s trademark infringement claim would be successful if it could show that consumers would likely confuse the dog chew toy sold by VIP Products with something Jack Daniel’s would put out or authorize. A dilution by tarnishment claim would be successful if Jack Daniel’s could show that its trademark in question is famous and it’s likely that unauthorized use would tarnish the distinctiveness of its mark. A federal trial court ruled in favor of Jack Daniel’s but the Ninth Circuit Court of Appeals dismissed both claims because it agreed with VIP Products’ defense that the parodic usage was expressive and therefore protected under the First Amendment.

Justice Elena Kagan’s Supreme Court opinion took issue with that. It reversed the Ninth Circuit’s dismissals and sent the case back to the trial court to give Jack Daniel’s another chance to show confusion and reputational harm.

VIP Products’ Trademark Infringement
In its lawsuit, Jack Daniel’s argued that VIP Products’ Bad Spaniels design was so similar to its trademarked whiskey bottle design that consumers would think Jack Daniel’s put out the chew toy or at least allowed others to do so. The Ninth Circuit applied the so-called Rogers test which it believed required dismissal of the claim.

The Rogers test comes from the case Rogers v. Grimaldi (1989), in whichthe defendants’ distribution of a film about two fictional dancers who imitated actors Ginger Rogers and Fred Astaire under the title Ginger and Fred was at issue. Ginger Rogers sued, and the Second Circuit found for the defendants because the title had an “expressive element” implicating “First Amendment values.” Subsequent courts have applied the Rogers test when trademark infringement claims have dealt with an expressive element. If the complainant cannot show that the challenged use of a mark “has no artistic relevance to the underlying work” or that it “explicitly misleads as to the source or the content of the work,” the case has gotten dismissed. The Ninth Circuit thought the Rogers test applied to the Jack Daniel’s scenario because of the inherently expressive element of VIP Products’ parody of Jack Daniel’s whiskey bottle and it thought Jack Daniel’s couldn’t either demonstrate that such usage had “no artistic relevance” or that it was “explicitly misleading.”

The Supreme Court disagreed that the Rogers test should have been applied at all. Its opinion argued that the Ninth Circuit had disregarded the fact that Rogers has only been applied when the alleged infringer does not use the complainant’s trademark as a way to suggest where their product comes from. The Second Circuit and other courts have routinely analyzed cases for straightforward likelihood of confusion instead of using the Rogers test when the alleged infringer uses a trademark as a source designation. They do this even when there is an expressive element to the usages.

Justice Kagan’s opinion found that VIP’s effective usage of the Jack Daniel’s trademark was indeed a designation of source for two reasons. First, VIP Products represents itself as owning and using the Bad Spaniels trademark and trade dress in its court filings (even though “Bad Spaniels” is not federally registered). It has also expressed to the court that it owns and uses the trademarks of its other parodic toys in the Silly Squeakers line. Second, the Bad Spaniels logo sits opposite the federally registered Silly Squeakers logo. Both logos appear to serve the same source-identifying function.

Justice Kagan’s opinion also disagreed with the Ninth Circuit’s assertion that just because something created a humorous message that it was entitled to a Rogers test application—after all, that could shield a boundless amount of usages from regular trademark law protection.

Consequently, the Supreme Court ruled that the Rogers test did not apply to the Bad Spaniels toy.

VIP Products’ Dilution by Tarnishment
Jack Daniel’s second claim was that consumer association of VIP Products’ Bad Spaniels toys with famous Jack Daniel’s brand products would diminish Jack Daniel’s brand reputation. The Ninth Circuit dismissed this claim based on the exemption for parodic usages.

Here, Justice Kagan’s opinion reiterates that not every parody can escape trademark liability. Further, it says, this exemption applies only to dilution claims whose usages are not source-identifying like they were in the Bad Spaniel’s situation. Therefore, the opinion says, this claim by Jack Daniel’s cannot be dismissed.

Conclusion
The Supreme Court in Jack Daniel’s Properties, Inc. v. VIP Products LLC. ultimately sent the case back to the trial court to give Jack Daniel’s another chance to show a likelihood of consumer confusion and reputational harm under the facts presented.  But as the decision was a victory for Jack Daniel’s, it is seen as a win for brand owners. Important legal takeaways from this are that so-called expressive use relating to another’s trademark does not mean the Rogers test or the dilution expressive exemption apply if the alleged infringer or “diluter” uses a trademark as a source indicator.

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