What does VIP Products v. Jack Daniel’s Properties, CV-14-02057-PHX-SMM, 2025 WL 275909 (D. Ariz. Jan. 23, 2025) tell us about the legal landscape for parodies sold as commercial products? Courts have long struggled to define the boundaries of trademark law when it comes to parodies that are not merely expressive speech, but also sold as commercial goods. While some cases, such as Louis Vuitton Malletier v. Haute Diggity Dog, 507 F.3d 252 (4th Cir. 2007) (“Chewy Vuiton” dog toys), Tommy Hilfiger Licensing v. Nature Labs, 221 F. Supp. 2d 410 (S.D.N.Y. 2002) (“Timmy Holedigger” perfume) and Jordache Enterprises v. Hogg Wyld, 828 F.2d 1482 (10th Cir. 1987) (“Lardashe” jeans), have held that parodic products are permissible and do not confuse consumers or dilute the plaintiff’s mark, others, like Hard Rock Cafe Licensing v. Pacific Graphics, 776 F. Supp. 1454, 1462 (W.D. Wash. 1991) (“Hard Rain Cafe” T-shirts) and Mutual of Omaha Insurance v. Novak, 836 F.2d 397 (8th Cir. 1987) (“Mutant of Omaha” novelty products), have found them infringing. The seemingly inconsistent rulings raise questions for both trademark owners and businesses engaging in parodic branding: What makes some parodies legally acceptable while others cross the line? How do courts distinguish protected expression under the First Amendment from unlawful trademark use?
The fact that some brands ignore the joke while Jack Daniel’s took its case to the Supreme Court suggests that parody jurisprudence alone isn’t the only factor at play; brand perception and positioning as well as enforcement philosophy influence how companies respond to parody. If the line between trademark use and expressive use were well-defined, one might expect more consistency in how brands react. Despite VIP Products clarifying some aspects of Rogers v. Grimaldi’s application, the broader legal landscape for parodic commercial products remains uncertain. VIP Products has now appealed the most recent decision, leaving additional questions.
The most recent decision of the trial court in the VIP Products v. Jack Daniel’s saga holds that VIP’s product is a successful parody yet is still vulnerable to a dilution by tarnishment claim, seemingly landing on the fence. Had Jack Daniel’s won both its trademark infringement claim and its dilution claim outright, it might have signaled a shift toward stronger brand protections at the expense of parodic expression. Instead, the decision leaves brands and practitioners without clear direction.
The parties were back before the trial court on remand after the Supreme Court determined that the Rogers v. Grimaldi test was misapplied where “Bad Spaniels” was used as source designation. Jack Daniel's v. VIP Products, 143 S. Ct. 1578 (2023). Whether VIP Products had infringed or diluted the Jack Daniel’s mark thus still needed to be assessed under the likelihood of confusion and likelihood of dilution tests, though informed by the First Amendment and the parodic nature of the use.
The trial court first considered whether the product constituted a parody by employing a two-prong test: Does it evoke the original and does it create contrast through humor sufficient to dispel confusion as to the source of the parody? See VIP Products, 2025 WL 275909 at 38. The second prong requires only that the parody create contrast through a humorous message – which can be done by juxtaposing the irreverent representation of the mark with the idealized image created by the mark’s owner. See People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 366 (4th Cir. 2001) (a parody is “conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark's owner”); Tommy Hilfiger Licensing, 221 F. Supp. at 418 (a parody simultaneously conveys contradictory messages—“that it is the original but also that it is not the original”).
However, courts “have not hesitated to prevent a manufacturer from using an alleged parody of a competitor's mark to sell a competing product,” particularly if some explanation of the joke is needed. See Vans v. MSCHF Product Studio, 602 F. Supp. 3d 358, 370 (E.D.N.Y. 2022) (quoting Harley Davidson v. Grottanelli, 164 F.3d 806, 812 (2d Cir. 1999)), aff’d 88 F.4th 125 (2d Cir. 2023).
Although “a parody is not often likely to create confusion,” Jack Daniel's, 143 S.Ct. at 1592, parody status alone does not end the inquiry, but rather is factored into the confusion analysis. It seems tautological, but if an attempt at parody conjures the protected mark without clearly distinguishing it and making the message of ridicule clear, the unsuccessful parody almost will certainly be deemed to create a likelihood of confusion in a straightforward analysis of the factors, as demonstrated in Vans v. MSCHF Product Studio, 88 F.4th 125 (2d Cir. 2023).
Whether a court believes there is a successful parody seems to serve as a proxy for the likelihood of confusion analysis. In VIP, the court found that the similarity factor is “subsumed” into the analysis of whether the work constitutes a parody and noted that the finding of parody establishes similarity, since it is necessary for a successful parody, but flips the weight of this factor instead to the parodist. The court also found that although the Jack Daniel’s mark was strong, this factor favored the parodist due to need for recognition of the parodied trademark. This is not universally so. The Vans court did not reverse the weight of this factor but rather found it to support the trademark owner, Vans, where MSCHF conceded that it chose Vans’ “Old Skool” marks and dress to create its parodic product because the marks represented the “most iconic, prototypical” skate shoe in the market. Unsurprisingly, the court found the product infringed.
As to intent, the VIP court found it neutral since the intent of the parodist is to poke fun, not mislead. This echoed the approach in Anheuser-Busch v. L L Wings, 962 F.2d 316 (4th Cir. 1992) (no infringement by “This Beach Is For You” beach towel mimicking trade dress of Budweiser beer labels), in which the court noted that parody diminishes the risk of consumer confusion and the intent to parody, while an intent to benefit from the original trademark is, nonetheless, not probative of a likelihood of confusion.
Having begun with the premise that a “successful parody is unlikely to be confusing,” VIP Products, 2025 WL 275909 at 47, the court found Jack Daniel’s had not shown by a preponderance of the evidence that the “Bad Spaniels” toy creates a likelihood of confusion, thus finding no infringement.
The VIP Products court nonetheless found the “Bad Spaniels” product likely to dilute Jack Daniel’s mark. The court noted that “the very qualities that help ‘Bad Spaniels’ to prevail on a trademark infringement claim since they create contrasts with Jack Daniel's mark by way of irreverent juxtaposition” are the ones that create dilution by tarnishment. The court cites McCarthy’s observation: “The irony is that the more distasteful and crude the parody, the less likely it is that the public will mistakenly think that the trademark owner has sponsored or approved it.” (citing McCarthy Section 31:153.)
VIP argued that “Bad Spaniels” had to be correlated to “Jack Daniel’s” and should be viewed apart from other expressive elements on the toy, such as “No. 2 on Your Tennessee Carpet,” particularly since there was no evidence of the fame of the “No. 7” element of the Jack Daniel’s label. The court, however, noted that it need not do so since the dilution was caused by the use of “Bad Spaniels” on a poop-themed dog toy, not the use of “Bad Spaniels” itself in comparison to Jack Daniel’s. The court suggests that it is the nature of the product itself on which an allegedly diluting use is made, not the mark alone, that must be considered, otherwise many uses would be beyond the reach of the Lanham Act. The court cites V Secret Catalogue v. Moseley, 605 F.3d 382 (6th Cir. 2010) as a prime example, noting that it was the use in connection with an adult novelty store that tarnished the Victoria’s Secret mark by associating it with sex, not the “Victor’s Secret” mark itself. (The court does not address, and neither did the Supreme Court, how a brand like Victoria’s Secret that regularly markets lingerie through sexualized imagery could have been tarnished by an association with shop selling sexual aids.)
Thus, it seems it is the scatological humor of the product that doomed VIP Products, since it contains “The Old No. 2 On Your Tennessee Carpet,” creating an unsavory association between poo and a beverage. Conversely, the Timmy Holedigger and Chewy Vuiton products did not contain any additional expressive content beyond the parody mark at issue. The fact that a court may look beyond the product itself to expressive elements on the product suggests that it may be prudent for sellers to be gentler when poking fun. It appears to be safe to parody a trademark on a consumer product that does not directly compete and is not inherently unwholesome, provided there are no other expressive elements which themselves are unsavory. Luxury goods manufacturers are seemingly expected to laugh at a joke about how they take themselves and their expensive products seriously, but toilet humor crosses a line.
In theory, other companies VIP Products has parodied could have made arguments akin to Jack Daniel’s, but their likelihood of success would have depended on several factors, including how courts perceived the strength of their marks, the nature of the parody (i.e., expressing something unsavory beyond holding the mark up to some ridicule), and the potential for consumer confusion or dilution. Jack Daniel’s had a particularly strong case, leveraging its carefully cultivated brand identity—one rooted in tradition, authenticity, and a classic Americana aesthetic—arguing that a parody involving dog waste risked tarnishing that reputation. A brand with a more playful or irreverent public image might find it harder to argue that a parody meaningfully harms its goodwill. However, if these companies had pursued litigation, they could have relied on the same fundamental claim: that VIP Products was using their marks in a way that constituted trademark use rather than pure expression.
Reprinted with permission from The Legal Intelligencer, © ALM Media Properties LLC. All rights reserved.
