Written by Samantha Frankel

On August 4, 2026, the Ninth Circuit vacated the district court’s permanent injunction barring VIP Products from selling its “Bad Spaniels” dog toy and directed entry of judgment for VIP on Jack Daniel’s claim for dilution by tarnishment.  VIP Prods., LLC v. United States, No. 25-2027, 2026 WL 2237625, at *2 (9th Cir. Aug. 4, 2026).  The precedential decision clarifies the role of parody after the Supreme Court’s 2023 ruling.  A parody used as a trademark remains subject to ordinary Lanham Act scrutiny, but its expressive character may still affect whether confusion or reputational harm is likely.  See id. at *9-10 & n.6.

The Bad Spaniels toy mimics the shape and label of a Jack Daniel’s whiskey bottle, replacing “Jack Daniel’s” with “Bad Spaniels,” “Old No. 7” with “Old No. 2,” and “Tennessee whiskey” with “Tennessee carpet,” while adding “43% POO BY VOL.”  After a 2017 bench trial, the district court found VIP liable for trademark infringement and dilution by tarnishment, and in 2018 it entered a permanent injunction.  Id. at *3.

VIP appealed, and in 2020 the Ninth Circuit reversed the dilution judgment and vacated the infringement judgment.  It held that Bad Spaniels was an expressive work subject to the Rogers test, under which a Lanham Act claim may proceed only if the challenged use has no artistic relevance to the underlying work or explicitly misleads consumers as to the source or content of the work.  The court also held that VIP was entitled to judgment on the dilution claim because Bad Spaniels used Jack Daniel’s trade dress to convey a humorous message.  VIP Prods., LLC v. Jack Daniel’s Props., Inc. (Jack Daniel’s I), 953 F.3d 1170, 1174-76 (9th Cir. 2020) (citing Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989)).  On remand, the district court granted summary judgment to VIP on both claims, and the Ninth Circuit summarily affirmed.  VIP Prods. LLC v. Jack Daniel’s Props., Inc., No. 21-16969, 2022 WL 1654040 (9th Cir. Mar. 18, 2022).  

In 2023, the Supreme Court vacated and remanded.  It held that because VIP used the challenged marks to identify the source of its own product, the Rogers test did not apply to the infringement claim and the dilution statute’s exclusion for noncommercial use did not shield the challenged use.  The Court left the merits of both claims for the lower courts.  Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 153, 161-63 (2023).  After the case returned to the district court, the court found for VIP on infringement because Jack Daniel’s had not shown a likelihood of confusion, but again found dilution by tarnishment and entered a permanent injunction.  VIP appealed.  VIP Prods., LLC, 2026 WL 2237625, at *4.

Each Asserted Mark Must Be Famous in Its Own Right

Under the Trademark Dilution Revision Act, a plaintiff must establish that its mark is famous, that the allegedly diluting mark is similar, and that the resulting association is likely to harm the famous mark’s reputation.  15 U.S.C. § 1125(c)(1), (2)(A), (2)(C).  The Ninth Circuit held that the district court improperly grouped Jack Daniel’s separate marks together when assessing fame.  The record established fame for the “Jack Daniel’s” mark and Jack Daniel’s registered trade dress, but not for “Old No. 7” in its own right.  As the court explained, one mark cannot borrow the fame of another.  VIP Prods., LLC, 2026 WL 2237625, at *5-6.

That distinction narrowed the set of marks the court could compare.  Because Jack Daniel’s did not independently establish the fame of “Old No. 7,” the court did not consider any dilutive effect of “Old No. 2” as a trademark.  “43% POO BY VOL.” likewise could not support the claim as a separate junior mark because the corresponding statement of alcohol content on the Jack Daniel’s label was not itself a mark.  Id. at *5 n.3, *8.

Association and Reputational Harm Are Separate Inquiries

Having limited the analysis to the “Jack Daniel’s” mark and registered trade dress, and to the corresponding “Bad Spaniels” mark and toy trade dress, the Ninth Circuit considered all of the toy’s lavatorial references in assessing whether the context in which VIP used those junior marks was likely to harm the reputation of the famous marks.  The Court confirmed that context may matter when a junior mark is not tarnishing on its face, citing Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 467 F. Supp. 366, 377 (S.D.N.Y. 1979), aff’d, 604 F.2d 200 (2d Cir. 1979), which involved a dilution claim under New York law based on the use of the cheerleaders’ uniform in a sexually explicit film and its advertising.  The Second Circuit also found that the challenged use “hardly qualifies as parody or any other form of fair use,” further distinguishing that case from Bad Spaniels.  604 F.2d at 206.  Even so, Jack Daniel’s still had to show that the context in which VIP used each junior mark was likely to harm the corresponding famous mark.  See VIP Prods., LLC, 2026 WL 2237625, at *5, *7-9.

The Ninth Circuit focused on the difference between calling a famous mark to mind and harming its reputation.  Jack Daniel’s expert relied on general research in consumer psychology to opine that associating food or beverages with defecation produces disgust.  But he did not study Bad Spaniels specifically or test whether scatological references on a dog toy were likely to damage the reputation of the “Jack Daniel’s” mark or its trade dress.  The Court concluded that the evidence showed, at most, a broad negative association between defecation and products intended for consumption, not that this particular use was likely to harm the marks Jack Daniel’s had proved famous.  VIP Prods., LLC, 2026 WL 2237625, at *7-9.  The expert testimony on which Jack Daniel’s relied therefore did not establish a likelihood of dilution by tarnishment.  Id. at *7-10.

Parody Is Relevant to the Merits of a Tarnishment Claim

VIP’s use of Jack Daniel’s mark and trade dress as a parody was central to the Ninth Circuit’s conclusion.  A successful parody calls the original to mind while simultaneously signaling that it is not the original.  The district court relied on the first part of that message to find association because the point of the toy was to evoke Jack Daniel’s, but it did not account for the second part when assessing reputational harm.  That omission was critical.  The same joke that makes the target recognizable may also lead consumers to see the product as the joke it was intended to be rather than as something that harms the original mark’s reputation.  Id. at *9-10.

Parody therefore operates within the merits inquiry.  A parody that functions as a source identifier is governed by the ordinary infringement analysis and falls outside the dilution statute’s noncommercial use exclusion.  Jack Daniel’s Props., Inc., 599 U.S. at 153, 161-63.  Its expressive content remains relevant to whether confusion or reputational harm is likely.  See VIP Prods., LLC, 2026 WL 2237625, at *9-10 & n.6.

For trademark owners, the ruling cautions against treating a portfolio of marks as a single unit in a tarnishment case.  A plaintiff should establish the fame of each asserted senior mark, identify the corresponding junior mark, and tie the resulting association to a likelihood of reputational harm.  The treatment of “Old No. 7” illustrates the difference between longevity and statutory fame.  Although Jack Daniel’s has held trademark rights in the mark since 1904, the statutory inquiry turned on whether “Old No. 7” itself was widely recognized by the general consuming public.  See id. at *2, *5-6.

Where the alleged harm arises from context, evidence tied to the challenged use and accounting for any parody will be especially important.  See id. at *7-10.

For creators and defendants, the decision confirms that the clarity and success of a parody may bear on the likelihood of reputational harm even when the challenged expression functions as a mark.  See id. at *9-10.  The Ninth Circuit also declined to reach VIP’s constitutional challenge to the tarnishment provision because the statutory analysis disposed of the appeal.  Id. at *10 n.9.  VIP prevailed because the statutory framework required a likelihood of reputational harm, while the record established only a generalized negative association.  See id. at *5-10.