VIP Prods., LLC v. Jack Daniel's Props., Inc.
291 F. Supp. 3d 891
D. Ariz.2018Background
- VIP Products designed and sold the "Bad Spaniels" dog toy in 2014, which mimicked Jack Daniel's bottle shape, black-and-white label, fonts, "Old No. 7" (changed to "Old No. 2"), and other trade dress elements; VIP acknowledged the design was modeled on Jack Daniel's and intended as parody.
- Jack Daniel's has long-used and federally registered distinctive, nonfunctional trademarks and trade dress for its Tennessee whiskey (continuous use since 1875; high consumer awareness and extensive licensing).
- Jack Daniel's sued VIP for trademark and trade dress dilution by tarnishment and for infringement under federal law and Arizona law; prior summary-judgment rulings established Jack Daniel's marks are valid, distinctive, and nonfunctional.
- At a four-day bench trial, Jack Daniel's presented expert survey and consumer-psychology testimony (Dr. Ford and Dr. Simonson) showing high rates of confusion and likely reputational harm; VIP presented rebuttal expert evidence (focus groups and testimony).
- The court found Jack Daniel's marks were famous, that VIP's product was similar, and that the association (defecation imagery and placement with toys) was likely to tarnish Jack Daniel's brand and cause consumer confusion.
- Court entered judgment for Jack Daniel's on dilution-by-tarnishment and trademark/trade dress infringement and directed Jack Daniel's to submit a proposed injunction.
Issues
| Issue | Plaintiff's Argument (VIP) | Defendant's Argument (Jack Daniel's) | Held |
|---|---|---|---|
| Dilution by tarnishment — was Jack Daniel's mark famous and was VIP's use likely to tarnish? | VIP argued its toy was parody and not likely to harm reputation; fame contested in part. | Jack Daniel's argued its marks were famous and that associating whiskey trade dress with defecation and toys would create negative associations and tarnish reputation. | Held for Jack Daniel's: marks were famous and "Bad Spaniels" likely to tarnish (TDRA and Arizona law). |
| Trademark/trade dress infringement — likelihood of confusion? | VIP claimed parody and lack of consumer confusion. | Jack Daniel's presented survey evidence and relatedness/market overlap to show confusion. | Held for Jack Daniel's: Sleekcraft factors (survey ~29% confusion, intent to copy, related channels, strength of mark) establish likelihood of confusion. |
| Parody defense — does parody bar liability? | VIP asserted First Amendment and nominative fair use/parody. | Jack Daniel's argued VIP intentionally copied to capitalize on goodwill; parody claim invalid where purpose is commercial exploitation. | Held for Jack Daniel's: parody rejected because VIP intended to capitalize on Jack Daniel's goodwill. |
| Equitable relief — is injunctive relief appropriate? | VIP implied injunction unnecessary or overbroad. | Jack Daniel's sought permanent injunction to stop tarnishment and infringement. | Held for Jack Daniel's: permanent injunctive relief appropriate under equity factors (irreparable harm, inadequacy of legal remedies, balance of hardships, public interest). |
Key Cases Cited
- Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042 (9th Cir.) (elements for trademark/trade dress claim: distinctiveness, nonfunctionality, likelihood of confusion)
- GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199 (9th Cir.) (similarity analysis—marks considered in their entirety)
- AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.) (eight-factor likelihood-of-confusion test)
- Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158 (9th Cir.) (TDRA requires only similarity, not near identity)
- Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir.) (discussing dilution and TDRA standards)
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir.) (tarnishment arises from unwholesome or unsavory associations)
- V Secret Catalogue, Inc. v. Moseley, 605 F.3d 382 (6th Cir.) (interpretation of TDRA’s likelihood standard)
- Network Automation, Inc. v. Advanced Sys. Concepts, 638 F.3d 1137 (9th Cir.) (Sleekcraft factors are flexible; not a rigid checklist)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (U.S.) (four-factor test for equitable injunctive relief)