"VIP Products is delighted by the Ninth Circuit’s recognition that the Bad Spaniels dog toy is a playful parody that has never posed any risk of tarnishing any of the Jack Daniel’s marks," company attorney Ben Cooper of Dickinson Wright said in a statement. "We hope that, after more than a decade of litigation, today’s decision will bring this dispute to an end, leaving consumers able to enjoy both whiskey and having some fun with their beloved pets."
VIP's toy mimics Lynchburg, Tennessee-based Jack Daniel's famous whiskey bottles with dog-themed alterations — replacing "Old No. 7" with "the Old No. 2, on your Tennessee Carpet" and alcohol descriptions with "43% Poo By Vol." and "100% Smelly."
How the case reached the appeals court
VIP sued Jack Daniel's in 2014 after receiving a cease-and-desist letter, seeking a court ruling that it did not violate the whiskey maker's trademark rights.
The Arizona court found that the toy infringed and diluted Jack Daniel's' trademarks. The 9th Circuit reversed the decision in 2020 based on VIP's free speech rights, and the Supreme Court revived the case in 2023 after finding VIP used the trademark to designate the source of its own goods, in a way that was not entitled to First Amendment protections.
U.S. District Judge Stephen McNamee determined last year that VIP diluted Jack Daniel's' trademarks, tarnishing them by associating the brand with dog excrement. The judge issued a permanent ban on sales of VIP's toy.
Appeals court overturns dilution ruling
A U.S. appeals court on Tuesday overturned a win for Jack Daniel's in a long-running trademark dispute with the maker of a "Bad Spaniels" dog toy that the whiskey company accused of violating its trademark rights.
The San Francisco-based 9th U.S. Circuit Court of Appeals reversed an Arizona judge's ruling that VIP Products' toy diluted its trademarks, in the latest twist in a 12-year-long legal fight that previously landed at the U.S. Supreme Court.
Spokespeople for Jack Daniel's parent company Brown-Forman BFb.N did not immediately respond to a request for comment on the decision.
Panel says Bad Spaniels would not harm reputation
A 9th Circuit panel reversed McNamee's ban in a 3-0 ruling on Tuesday, finding that "Bad Spaniels" would not harm Jack Daniel's reputation.
"Bad Spaniels is a parodic dog toy not intended for human consumption," the 9th Circuit said. "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."
The case is VIP Products LLC v. Jack Daniel's Properties Inc, 9th U.S. Circuit Court of Appeals, No. 25-2027.
For VIP: Ben Cooper of Dickinson Wright
For Jack Daniel's: Matthew Nicholson of Williams & Connolly
BF.B•
