The Ninth Circuit Sends Bad Spaniels Home Again
Three years ago, we wrote about the Supreme Court’s 2023 decision in Jack Daniel’s Properties, Inc. v. VIP Products, LLC, the case pitting the world’s best-selling whiskey against a squeaky dog toy called “Bad Spaniels.” At the time, the Court had just narrowed the Rogers v. Grimaldi test for expressive works and sent the case back down to the lower courts to sort out whether the toy infringed or diluted Jack Daniel’s marks.
We said then that the fight over Rogers was far from over. What we probably didn’t expect was that, more than a decade after VIP first sued for a declaratory judgment in 2014, the parties would still be litigating this. But on August 4, 2026, the Ninth Circuit handed down decision which starts another chapter as it vacated the permanent injunction Jack Daniel’s and remanded to the District Court.
A Quick Recap of How We Got Here
In 2014, VIP introduces Bad Spaniels, a parody dog toy that swaps “Jack Daniel’s” for “Bad Spaniels,” “Old No. 7” for “Old No. 2,” and adds taglines like “43% POO BY VOL.” Jack Daniel’s demands VIP stop selling it, then VIP sues first.
In 2018, after a bench trial, the district court finds infringement, dilution, and enters a permanent injunction for Jack Daniel’s.
In 2020, the Ninth Circuit reverses, holding Bad Spaniels is an “expressive work” entitled to First Amendment protection under Rogers.
In 2023, the Supreme Court unanimously vacates that ruling, holding that Rogers doesn’t apply when a party uses another’s mark as a source identifier for its own goods, which is exactly what VIP had done by trademarking “Bad Spaniels” itself. The case was remanded to lower courts.
In 2025, on remand, the district court finds no likelihood of confusion, a win for VIP, but holds VIP liable for dilution by tarnishment and enters a new permanent injunction.
In 2026, VIP appeals again. On August 4, 2026, the Ninth Circuit vacated the most recent permanent injunction due to a failure to meet the burden of dilution by tarnishment and remanded to the District Court.
This litigation lasted twelve years with two trips through the Ninth Circuit and one trip to the Supreme Court. The parties still have no final judgment.
What the Ninth Circuit Actually Decided
This time, the fight was over dilution by tarnishment under the Federal Trademark Dilution Act, the theory that Bad Spaniels harmed Jack Daniel’s reputation by associating fine Tennessee whiskey with dog excrement. To win on that theory, a plaintiff must show three things: its trademark is famous, the accused product uses a mark that is similar to the famous trademark, and the accused product’s mark creates a mental association likely to damage the famous trademark’s reputation. The panel found Jack Daniel’s came up short, for two main reasons: (1) fame must be proven mark by mark and (2) generic consumer-psychology testimony does not meet evidentiary burden.
Fame must be proven mark by mark, not by the bottle. The district court had lumped “Jack Daniel’s” together with “Old No. 7” and treated the whole brand as famous. The Ninth Circuit said that’s not how it works, fame in a flagship mark doesn’t automatically extend to every other mark in the portfolio. Because Jack Daniel’s only proved that “Jack Daniel’s” and its registered trade dress, the bottle shape, were famous. “Old No. 7” dropped out of the dilution by tarnishment analysis entirely, which meant “Old No. 2” couldn’t be used against VIP either.
Generic consumer-psychology testimony does not meet evidentiary burden. Jack Daniel’s expert relied on a decades-old model of brand association to argue that pairing any food or beverage with images of defecation creates disgust. But he never studied whether this toy harmed these specific famous marks, and his analysis never accounted for the fact that Bad Spaniels is an obvious parody. The court agreed with the Second and Fourth Circuits that parody isn’t an automatic defense to dilution, but it is something courts can weigh. A successful parody sends two messages at once; it calls the original to mind while also signaling it isn’t the original. Consumers who get the joke are less likely to walk away thinking less of Jack Daniel’s.
VIP’s counsel struck a hopeful note after the ruling, telling reporters they hope this finally puts the twelve-year dispute to rest so that “consumers [are] able to enjoy both whiskey and having some fun with their beloved pets.”
The Real Lesson Isn’t About Dog Toys
This case illustrates a lesson for every business owner that relies on brand identity, A company with a famous brand has spent over a decade fighting a trademark dispute over squeaky dog toy. Yet, they still do not have a final judgment.
That’s not a knock-on Jack Daniel’s litigation strategy. It’s a reflection of how genuinely uncertain trademark dilution and parody disputes can be, even for sophisticated parties with deep pockets and strong trademarks. Along the way, this case has required: a full bench trial; two separate Ninth Circuit appeals; a Supreme Court decision; and second remand to the District Court.
Each of those steps carries its own legal fees, expert witness costs, and business disruption, regardless of who eventually “wins.” The underlying legal question here wasn’t fringe or exotic; it was a straightforward-sounding trademark dispute over a dog toy. If a case like that can take twelve years and still be unresolved, it’s a useful reminder of how hard it can be to predict litigation outcomes, timelines, or budgets from the outside.
Where Enforcement and Defense Insurance Fit In
This is exactly the kind of prolonged, expensive uncertainty that IP enforcement and defense insurance is built for. Whether you’re the brand owner trying to protect a famous mark from a competitor’s product or the smaller company on the other end of a cease-and-desist letter, litigation costs can escalate well beyond what either side originally budgeted.
Having a policy in place before a dispute arises means you’re not making decisions about whether to fight, settle, or fold based solely on what your legal budget can absorb that year. It means the merits of the case, not the cost of proving them, drives the strategy.
If you want to talk through how enforcement or defense coverage could apply to your brand or product portfolio, visit our website or reach out to our experienced team. We’ve been helping businesses navigate exactly this kind of uncertainty for over three decades.
