The First Amendment may preclude an infringement claim against an “expressive work” unless the accused use is either (1) not artistically relevant to the underlying work or (2) explicitly misleads consumers as to the source or content of the work for the courts whcih have adopted the test under Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). 

In Jack Daniel's Properties, Inc. v. VIP Products, LLC, 599 U.S. 140 (2023), the U.S. Supreme Court held that a party does not need to satisfy the Rogers threshold test when the expressive work is used as a source-identifying trademark. 

On remand, the District of Arizona held that “Bad Spaniels” was likely to tarnish the Jack Daniel's trademarks and trade dress under the Trademark Dilution Revision Act (TDRA), and issued a permanent injunction. VIP Products v. Jack Daniel's Properties, Inc., No. CV-14-02057-PHX-SMM (D. Ariz. Jan. 23, 2025). In particular, the district court noted expert testimony that "relied on consumer psychology research to establish that when food or beverage is associated with defecation, disgust is generated in the consumer's mind with respect to that food or beverage which has been associated with defecation." 

On appeal, the Ninth Circuit disagreed because this "ignored the effect of a 'humorous difference' on whether Bad Spaniels harms the reputation of JDPI's famous marks." VIP Products, LLC v. Jack Daniel's' Properties, Inc., No. 25-2027, — F.4th — (9th Cir. Aug. 4, 2026) . The Court found that the expert opinion about tarnishment based on the likelihood of generating disgust from a scatological parody was "pure conjecture" and "ignores that Bad Spaniels is an obvious parody."  

Citing Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 266–67 (4th Cir. 2007); Deere & Co., v. MTD Prods., Inc., 41 F.3d 39, 45 (2d Cir. 1994) (explaining that “[n]ot every alteration will constitute dilution, and more leeway for alterations is appropriate in the context of satiric expression and humorous ads for noncompeting products”); and Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 508 (2d Cir. 1996) (finding “no likelihood of dilution under a tarnishment theory,” in part because the Muppets Spa'am character satirized the Spam mark, “parody inheres in the product,” and “[w]ithout Spa'am, the joke is lost”); the Ninth Circuit agreed with other circuit courts that parody is not automatically a complete defense to a claim of dilution because the parody could be used as its own designation of source, but nonetheless, "parody is a relevant factor in evaluating likelihood of dilution" and the clarity of VIP's parodic intent impacts the likelihood that the famous marks of Jack Daniel's are harmed.  

“A parody must convey two simultaneous—and contradictory—messages: that it is the original, but also that it is not the original and is instead a parody.” Hormel, 73 F.3d at 503 (citation modified); see also Haute Diggity Dog, 507 F.3d at 267 (“Even as Haute Diggity Dog's parody mimics the famous mark, it communicates simultaneously that it is not the famous mark, but is only satirizing it.”). That dual message impacts the dilution analysis because, where a parody is successful and “not particularly subtle,” it is a commonsense conclusion that consumers are more “likely to see [it] as the joke it was intended to be.” Hormel, 73 F.3d at 503. Thus, . . . where an allegedly diluting product creates a “successful parody,” the “facts impose on [the plaintiff] an increased burden to demonstrate that the distinctiveness of its famous marks is likely to be impaired” to obtain an injunction under a blurring theory of dilution. Haute Diggity Dog, 507 F.3d at 267. 

   * * *

Failing to consider the effect of VIP's obvious parody on the likelihood of tarnishment was a critical misstep, and the district court erred in adopting the conclusions that followed. 

The Ninth Circuit vacated the permanent injunction and remanded for entry of judgment in favor of VIP's "Bad Spaniels." 

The TTABlog commented: "Long live parody!"