Wednesday, August 5, 2026
Page 4
Ninth Circuit:
Toy Parodying Jack Daniels Bottle Doesn’t Dilute Mark
By a MetNews Staff Writer
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The Ninth U.S. Circuit Court of Appeals held yesterday—in a case that has made two trips to the U.S. Supreme Court and back—that a squeaky, chewable toy resembling a bottle of Jack Daniel, labeled “Bad Spaniels,” is not violative of the federal statute proscribing tarnishment of trademarks, vacating an injunction against the manufacturing, advertising or selling of the parodic product.
Under the act, the owner of a “famous mark that is distinctive” may gain an injunction to bar the “use of a mark or trade name in commerce that is likely to cause...dilution by tarnishment of the famous mark.”
The Ninth Circuit held yesterday, in an opinion by Circuit Judge Milan D. Smith Jr., that “JDPI has not met its burden to show dilution by tarnishment and is therefore not entitled to injunctive relief” under the Federal Trademark Dilution Act (“TDRA”).
Smith Kicked off his opinion whimsically, saying:
“A man walks into a bar. Spying a distinct whiskey bottle, he designs a squeaky dog toy to parody it. The toy is called ‘Bad Spaniels,’ and it looks like—you guessed it—a bottle of Jack Daniel’s. But instead of ‘Old No. 7 Brand Tennessee Sour Mash Whiskey,’ the toy says, ‘Old No. 2 On Your Tennessee Carpet.’ It also says ‘43% POO BY VOL.’ and ‘100% SMELLY.’ Unfortunately for Appellant VIP Products. LLC (VIP), Appellee Jack Daniel’s Properties, Inc. (JDPI) did not appreciate the joke.”
Expert Testimony
He wrote that the District Court judge, Stephen M. McNamee of the District of Arizona, reliance on the testimony of JDPI’s expert witness, Itamar Simonson. Simonson is a professor of marketing, emeritus, at Stanford University’s Graduate School of Business.
On the basis of that testimony, McNamee found that “[b]ecause Jack Daniel’s produces a product intended for human consumption, association of Jack Daniel’s marks with something like dog feces is” not only tarnishing, but “particularly detrimental.”
Smith declared:
“[E]ven taking together all of Bad Spaniels’s lavatorial references, Dr. Simonson’s testimony does not establish a harmful association between any such reference and JDPI’s two famous marks—‘Jack Daniel’s’ and its registered trade dress. Dr. Simonson’s testimony does not show that any association between either “Bad Spaniels’ and ‘Jack Daniel’s” or between the products’ similar trade dress is likely to damage the reputation of JDPI’s famous marks….
“To the extent Dr. Simonson’s testimony established any negative association, it was between some broad concept of defecation and consumption of food and drink products. Dr. Simonson acknowledged that he did not conduct a study on whether the Bad Spaniels dog toy itself creates harmful associations….”
No Human Consumption
The jurist continued:
“…Bad Spaniels is a parodic dog toy not intended for human consumption. There is no evidence in the record from which a court could reasonably infer that scatological references made on a dog toy have the same likelihood of generating disgust as identical references on a consumable product meant for humans might. Dr. Simonson’s opinion to contrary is pure conjecture.
Smith added:
“Dr. Simonson’s opinions cannot bear out JDPI’s tarnishment claim for another critical reason: the ANM ignores that Bad Spaniels is an obvious parody.”
He observed in a footnote:
“The parodic nature of VIP’s product does not, on its own, dispose of JDPI’s tarnishment claim in light of the Supreme Court’s holding that VIP could not avail itself of the TDRA’s statutory exclusion for fair-use parodic works. Jack Daniel’s II….But that holding regarding a statutory coverage exception did not concern whether parody can factor into a tarnishment analysis or suggest any reason why it may not.”
Origin of Product
Telling of how the toy came into existence, with more detail than Smith provided, VIP said in its opening brief on appeal:
“Bad Spaniels was whelped in a bar. In 2013, while VIP owner Stephen Sacra and his wife, Wendy Sacra, sat at a bar waiting for dinner, he was ‘looking around’ and thinking about ‘what new product can we come up with.’…Alcohol brands were a natural target for VIP’s parody products because Steve and Wendy, VIP’s Director of International Sales, both had robust backgrounds in alcohol marketing….
“Sacra found his inspiration in a square bottle with a black label. He immediately called his graphic designer, Elle Phillips, at her home and, in a fifteen-second conversation, told her ‘Bad Spaniels.’…She got the joke, and worked up a sketch of a funny dog toy that parodied Jack Daniel’s
“The following year, the new Bad Spaniels toy joined a pack of parodies….VIP designs, manufactures, and sells dog toys of various materials, shapes, and sizes. Among its product offerings is a line of interactive-play toys made predominantly of injection-molded vinyl and branded Silly Squeakers….VIP’s Silly Squeakers® dog toys parody famous brands in shapes of beer, wine, soda, and liquor bottles.”
The case is VIP Products, LLC v. Jack Daniel’s Properties, 25-2027.
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