Case 2:14-cv-02057-SMM Document 374 Filed 01/23/25 Page 1 of 49
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF ARIZONA
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`VIP Products LLC,
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`Plaintiff,
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`v.
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`Jack Daniel's Properties Incorporated,
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`Defendant.
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`No. CV-14-02057-PHX-SMM
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`AMENDED FINDINGS OF FACT,
`CONCLUSIONS OF LAW, AND
`ORDER
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`This matter is before the Court on remand from the United States Circuit Court of
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`Appeals for the Ninth Circuit for proceedings consistent with the United States Supreme
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`Court’s decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. 140
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`(2023). The parties have agreed that the Court may decide this matter without further
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`fact-finding or reopening of trial. The parties agreed to instead file supplemental briefing
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`in the form of cross-motions for judgment. (Doc. 333). The parties’ motions are now
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`fully briefed and ripe for ruling. (Docs. 338–39, 357–58, 368–69). The United States has
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`intervened and filed a brief in support of the constitutionality of the Lanham Act’s cause
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`of action for dilution by tarnishment. (Doc. 364). The Court held oral argument in this
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`matter on December 3, 2024. Having heard and considered the parties’ arguments, the
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`Court now issues its amended findings of fact and conclusions of law.
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`BACKGROUND AND PROCEDURAL HISTORY
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`At the heart of this fervently contested dispute, which has now entered its second
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`decade of litigation, lies a squeaky dog toy. This trademark infringement and dilution
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`Case 2:14-cv-02057-SMM Document 374 Filed 01/23/25 Page 2 of 49
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`action has yielded two appeals and now an opinion by the United States Supreme Court,
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`which vacated the Ninth Circuit’s judgment and deposited this action before the Court for
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`a third time. By now the parties are more than familiar with the facts, and so the Court
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`only briefly recounts the background of this dispute.
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`VIP filed this action for declaratory judgment against Jack Daniel’s on September
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`16, 2014, seeking a judgment from this Court that VIP’s “Bad Spaniels” Silly Squeaker
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`chewable rubber dog toy (“Bad Spaniels”), designed to imitate a bottle of Jack Daniel’s
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`Black Label Whiskey, did not infringe on nor dilute Jack Daniel’s trademark rights to its
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`black label whiskey. (Docs. 1 at 3–4, 49 at 9). Jack Daniel’s counterclaimed for
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`trademark infringement and trademark dilution in violation of the United States
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`Trademark Act, 15 U.S.C. § 1125 (“Lanham Act” or “TDRA”) and Arizona law. (Doc.
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`12).
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`VIP moved for summary judgment and Jack Daniel’s cross-moved for partial
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`summary judgment. Ruling on the parties’ cross-motions, the Court rejected VIP’s
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`nominative and First Amendment fair use defenses, denying VIP’s motion and granting
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`Jack Daniel’s. The Court found as a matter of law that Jack Daniel’s trade address and
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`the design of its whiskey bottle were distinctive and nonfunctional, and therefore entitled
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`to trademark protection.
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`In 2017, this matter proceeded to a bench trial on Jack Daniel’s dilution and
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`infringement claims. After the four-day bench trial, the Court found that VIP’s “Bad
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`Spaniel’s” trademark was likely to confuse consumers and therefore constituted
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`trademark infringement in violation of the Lanham Act. The Court also found that “Bad
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`Spaniel’s” tarnished Jack Daniel’s Old. No. 7 Tennessee Sour Mash Whiskey trademarks
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`and trade dress.1 The Court entered a permanent injunction preventing VIP from
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`“sourcing, manufacturing, advertising, promoting, displaying, shipping, importing,
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`offering for sale, selling or distributing the Bad Spaniels dog toy.” (Doc. 262 at 6).
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`1 Jack Daniel’s has several registered trademarks, including for “Jack Daniel’s” itself, for
`“Old No. 7,” for the ornamental label design, and others. For the purposes of this action,
`Jack Daniel’s various trademarks relating to its black label whiskey are referred to
`collectively as “Jack Daniel’s trademarks and trade dress.”
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`Case 2:14-cv-02057-SMM Document 374 Filed 01/23/25 Page 3 of 49
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`VIP appealed the Court’s judgment in favor of Jack Daniel’s to the Ninth Circuit.
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`The Ninth Circuit reversed the Court’s judgment on the issue of dilution and vacated the
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`Court’s judgment after trial on the issue of consumer confusion, holding that VIP’s use of
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`the “Bad Spaniel’s” mark was expressive in nature and thus protected First Amendment
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`expression under Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). See VIP Prods. LLC v
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`Jack Daniel’s Props., Inc., 953 F.3d 1170 (9th Cir. 2020). On remand from the Ninth
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`Circuit, this Court found that Jack Daniel’s could not satisfy either prong of the two-
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`prong Rogers test and granted summary judgment to VIP on the infringement and
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`dilution claims. (Doc. 308). Jack Daniel’s appealed and the Ninth Circuit summarily
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`affirmed.
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`The Supreme Court granted certiorari on the Ninth Circuit’s rulings on both
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`trademark infringement and dilution. 599 U.S. at 152. On June 8, 2023, the Supreme
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`Court held that the heightened First Amendment protections provided by Rogers did not
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`apply where the mark in question was used by the infringer as a mark. Id. at 153
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`(“Without deciding whether Rogers has merit in other contests, we hold that it does not
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`when an alleged infringer uses a trademark in the way the Lanham Act most cares about:
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`as a designation of source for the infringer’s own goods.”). The Supreme Court vacated
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`the Ninth Circuit’s 2020 decision and remanded. Ibid. The Ninth Circuit in turn
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`remanded to this Court for further proceedings. Remaining for this Court’s consideration
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`on remand are both Lanham Act claims for dilution and infringement; specifically, the
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`Court must determine, consistent with the Supreme Court’s decision in this case, (1)
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`whether VIP’s “Bad Spaniels” dog toy tarnishes Jack Daniel’s trademarks, and (2)
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`whether “Bad Spaniels” infringes on Jack Daniel’s trademark rights.
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`The Court held a status conference in this matter on November 27, 2023, at which
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`the parties agreed that this matter may be resolved on the record established at the 2018
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`bench trial of this matter and that it would be unnecessary to engage in further fact-
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`finding. The parties agreed to file additional briefing on the remaining issues in the form
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`of cross-motions for judgment. The parties’ motions are now fully briefed. The United
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`Case 2:14-cv-02057-SMM Document 374 Filed 01/23/25 Page 4 of 49
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`States has filed a brief defending the constitutionality of the Lanham Act’s dilution
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`provisions.
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`The Court’s opinion below constitutes the Court’s amended findings of fact,
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`conclusions of law, and order.
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`AMENDED FINDINGS OF FACT2
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`Plaintiff VIP Products, LLC designs, manufactures, markets, and sells chew toys
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`for dogs. VIP sells various brands of dog chew toys, including the “Tuffy’s” line (durable
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`sewn/soft toys), the “Mighty” line (durable toys made of a different material than the
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`Tuffy’s line), and the “Silly Squeakers” line (durable rubber squeaker novelty toys).
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`(Doc. 242 at 3). VIP is an Arizona limited liability company with its principal place of
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`business in Phoenix, Arizona. (Docs. 49 ¶ 1; 204-1, Ex. A). President of VIP Steven
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`Sacra and his wife are the principal owners of VIP. (Doc. 234 at 24). Mr. Sacra is a
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`talented entrepreneur who developed VIP’s line of dog toys. (Id. at 30–37). His talent and
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`creativity often lead to “of the moment” inspiration, such as toys Mr. Sacra creates as
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`parodies of other companies’ products. (Doc. 237 at 102).
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`Defendant Jack Daniel’s Properties, Inc. is a Delaware corporation with its
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`principal place of business in San Rafael, California. (Doc. 1 ¶ 2, 15-1 ¶ 2). Jack Daniel’s
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`owns and licenses the trademarks and trade dress used in connection with Jack Daniel’s
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`products. (Docs. 105; 204-1, Ex. A). Jack Daniel’s Tennessee whiskey has been sold in
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`the United States continuously since at least 1875, except during Prohibition. (Doc. 105;
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`U.S. Trademark Reg. No. 42,663). Since 1875, Jack Daniel’s Tennessee whiskey has
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`borne the “Jack Daniel’s” trademark and the “Old No. 7” trademark. (Doc. 234 at 51–52)
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`(discussing U.S. Trademark Reg. Nos. 42,663, 582,789, and 1,923,981). Jack Daniel’s
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`federal registration of its trademarks and trade dress for whiskey also includes Trademark
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`2 As the parties agreed that no further fact-finding was necessary for the Court’s decision
`and the disposition of this action was vacated based on the Court’s application of the law,
`the findings of fact recounted below are largely incorporated verbatim from those in the
`Court’s January 30, 2018 Findings of Fact, Conclusions of Law, and Order. (Doc. 245)
`(“2018 Order”). However, the Court has revised or omitted findings of fact in its prior
`Order that recounted, depended on, or applied statements of the law which have since
`changed. Due to these alterations, the Court finds it appropriate to restate its amended
`findings of fact rather than incorporate by reference its prior findings.
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`Case 2:14-cv-02057-SMM Document 374 Filed 01/23/25 Page 5 of 49
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`Reg. No. 4,106,178 for the three-dimensional configuration of a square-shaped bottle
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`container. (Doc. 12 at 7). Jack Daniel’s trade dress has included these trademarks for
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`many decades. (Doc. 234 at 55–56, 68).
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`Jack Daniel’s has maintained an active brand licensing program for many years.
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`(Docs. 105, Ex.1; 234 at 68–69; 111–13). Jack Daniel’s trademarks and trade dress have
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`appeared on thousands of products other than whiskey, including food, apparel, and a
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`limited number of pet products. (Doc. 230-16 thru 231-7). With respect to Jack Daniel’s
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`branded pet products, Jack Daniel’s offers dog leashes, collars, and dog houses. (Docs.
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`234 at 113, 230-9 thru 230-12). Jack Daniel’s has offered these dog accessories since
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`before the events giving rise to this case. (Doc. 241 at 7).
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`Initially launched in approximately 2007, VIP’s Silly Squeakers line of dog toys
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`includes a variety of toys in the shapes of beer, wine, soda, and liquor bottles. (Doc. 236
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`at 31–38). Mr. Sacra’s intent behind producing the Silly Squeakers line of dog toys was
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`to develop creative parodies of existing products. (Id. at 45–47, 56). Examples of this line
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`of toys, as provided by Mr. Sacra, include “Smella R-Crotches,” a parody of Stella
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`Artois, “Heini Sniff’n,” a parody of Heineken, and “Pissness,” a parody of Guinness.
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`(Doc. 237 at 96–98). Mr. Sacra maintains his opinion that these parodies are just
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`harmless, clean fun, and are not distasteful or harmful. (Id. at 99).
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`VIP created and marketed the “Bad Spaniels” silly squeaker dog toy, pictured
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`below, in 2014. (Doc. 158). The “Bad Spaniels” toy is in the shape of a liquor bottle and
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`features a wide-eyed spaniel placed over the words “Bad Spaniels” and “the Old No. 2,
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`on your Tennessee Carpet.” (Ibid.) At the bottom of the “Bad Spaniels” toy are the words
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`“43% POO BY VOL.” and “100% SMELLY.” The back of the Silly Squeakers label for
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`the “Bad Spaniels” toy states “This product is not affiliated with Jack Daniel Distillery.”
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`(Ibid.)
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`///
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`//
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`///
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`Case 2:14-cv-02057-SMM Document 374 Filed 01/23/25 Page 6 of 49
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`///
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`VIP’s intent in designing the “Bad Spaniels” toy was to match the bottle design for
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`Jack Daniel’s Tennessee Sour Mash Whiskey. (Doc. 157). The design elements
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`transposed onto the “Bad Spaniels” toy include the size and shape of the product, the use
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`of white lettering and filigree over a black background, and the font styles. Mr. Sacra
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`originally coined the name “Bad Spaniels” and then requested Designer Elle Phillips to
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`work on a proposed design. (Doc. 236 at 55–56). Ms. Phillips understood that “Bad
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`Spaniels” was a reference to “Jack Daniel’s.” (Doc. 233-1 at 47, 49–50). Ms. Phillips was
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`familiar with Jack Daniel’s brand. (Id. at 52–53). Prior to starting the design for “Bad
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`Spaniels,” Ms. Phillips recalled various Jack Daniel’s packaging features from memory,
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`including “[t]he black and white label, sort of a cursive font for Tennessee, simple type,”
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`and the square shape of the bottle, as well as the use of a number on the neck label. (Id. at
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`53–54).
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`Case 2:14-cv-02057-SMM Document 374 Filed 01/23/25 Page 7 of 49
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`Ms. Phillips then retrieved a bottle of Jack Daniel’s Tennessee Whiskey from her
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`liquor cabinet, examined it, and placed it on her desk while she developed a sketch. (Id. at
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`54–55; Docs. 104-1 at 101–02, 225-17). She referenced the bottle “every now and then
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`throughout the process.” (Doc. 233-1 at 66–67). Ms. Phillips wanted her sketch to be
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`close to the same as the Jack Daniel’s bottle. (Id. at 67). When finished, the “Bad
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`Spaniels” product featured all the elements of Jack Daniel’s trade dress, including the
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`bottle shape, color scheme, font, and stylization, as well as the word “Tennessee”. (Doc.
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`158). VIP introduced “Bad Spaniels” in 2014. (Doc. 227-7, 227-8). In VIP’s catalogues,
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`the toy appears in a bar setting alongside various hanging bottles, one of which is
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`recognizable as a Jack Daniel’s bottle. (Ibid.)
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`After VIP introduced “Bad Spaniels,” Jack Daniel’s promptly demanded that VIP
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`stop selling the new dog toy. (Doc. 47). VIP responded by filing a complaint in this Court
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`seeking a declaratory judgment that “Bad Spaniels” did not infringe on or dilute any
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`trademark or trade dress rights owned by Jack Daniel’s. (Docs. 1, 49 at 9–11).
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`I.
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`FINDINGS RELATING TO TARNISHMENT
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`The Trademark Dilution Revision Act (the “TDRA”) was signed into law in 2006.
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`See Pub.L. 109-312, 120 Stat. 1730 (Oct. 6, 2006). The TDRA defines trademark dilution
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`as follows:
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`Subject to the principles of equity, the owner of a famous mark that is
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`distinctive, inherently or through acquired distinctiveness, shall be entitled
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`to an injunction against another person who, at any time after the owner’s
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`mark has become famous, commences use of a mark or trade name in
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`commerce that is likely to cause dilution by blurring or dilution by
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`tarnishment of the famous mark, regardless the presence or absence of
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`actual or likely confusion, of competition, or of actual economic injury.
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`15 U.S.C. § 1125(c)(1). Importantly, the TDRA changed the standard for actionable
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`dilution to include marks that are “likely to cause” harm to the reputation of the famous
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`Case 2:14-cv-02057-SMM Document 374 Filed 01/23/25 Page 8 of 49
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`mark, rather than marks causing “actual” harm. See V Secret Catalogue, Inc. v. Mosely,
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`605 F.3d 382, 384 n.1 (6th Cir. 2010), citing 15 U.S.C. § 1125(c)(2)(C).
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`The TDRA further defines dilution by tarnishment as “associating arising from the
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`similarity between a mark or trade name and a famous mark that harms the reputation of
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`the famous mark.” 15 U.S.C. § 1125(c)(2)(C); Mattel Inc. v. MCA Records, Inc., 296
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`F.3d 894, 903 (9th Cir. 2002) (“‘Dilution’ refers to the ‘whittling away of the value of a
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`trademark’ when it’s used to identify different products.”) (quoting another source). To
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`prove dilution by tarnishment under the TDRA, Jack Daniel’s most prove that at least one
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`of its asserted trademark and trade dress rights was not only valid but also famous before
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`the accused use began, and that the accused use is likely to cause negative associations
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`that harms the reputation of the famous mark. See 15 U.S.C. § 1125(c); A.R.S. 44-
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`1448.01; Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 (9th Cir. 2008); Moab Indus.,
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`LLC v. FCA US, LLC, No. CV 12-8247, 2016 WL 5859700, at *8 (D. Ariz. Oct. 6,
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`2016) (stating that the “elements necessary to prove [an Arizona] state law trademark
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`dilution counterclaim are basically identical” to federal trademark dilution claims).
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`a. Fame
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`A trademark or trade dress is famous if “it is widely recognized by the general
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`consuming public of the United States as a designation of source.” 15 U.S.C. §
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`1125(c)(2)(A). All relevant factors may be considered, including:
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`(i)
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`The duration, extent, and geographic reach of advertising and publicity of
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`the mark;
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`(ii)
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` The amount, volume, and geographic extent of sales of goods or services
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`offered under the mark;
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`(iii)
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` The extent of actual recognition of the mark; and
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`(iv) Whether the mark [has been] registered . . . on the principal register.
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`See id.; accord A.R.S. § 44-1448.01(A)(1)–(8).
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`Regarding the first factor—advertising—Jack Daniel’s has spent hundreds of
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`millions of dollars to promote Jack Daniel’s whiskey. (Doc. 234 at 55–56, 59–69, 80;
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`Case 2:14-cv-02057-SMM Document 374 Filed 01/23/25 Page 9 of 49
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`Doc. 220, Ex. 105–24; Doc. 229-5–229-9, 229-13, and 229-16). Regarding sales, Jack
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`Daniel’s has been the best-selling whiskey in the United States since 1997, exceeding 75
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`million cases and 10 billion dollars in sales. (Doc. 234 at 48–50). In terms of recognition,
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`Jack Daniel’s trademarks have been used continuously for over a century, except during
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`Prohibition. (Doc. 234 at 49–52). Jack Daniel’s trademarks and trade dress have been
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`viewed by millions of Americans in movies and television programs. (Doc. 234 at 62–66,
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`68; Doc. 220, Exs. 107, 109–11, and 146). Jack Daniel’s is prominently featured as
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`jackdaniels.com, which was visited more than four million times in 2014. (Docs. 235 at
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`66, 220 Ex. 112, and 229-8). Jack Daniel’s trade dress is prominently featured on social
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`media pages for the brand. (Docs. 234 at 66, 229-9). Based on Jack Daniel’s internal
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`records, Jack Daniel’s has achieved global recognition and aided consumer awareness of
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`the Jack Daniel’s brand is consistently around 98%.3 (Doc. 234 at 50).
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`b. Similarity
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`Under the TDRA’s likelihood of dilution standard, in order to establish similarity
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`in a dilution by tarnishment case, a party must show only “similarity,” not substantial
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`similarity or identicalness, between the famous mark and the accused mark. See Levi
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`Strauss & Co. v. Abercrombie & Fitch Trading Co., 633 F.3d 1158, 1159 (9th Cir. 2011)
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`(stating that “the ‘identical or nearly identical’ standard did not survive Congress’s
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`enactment of the TDRA.”). The factors to be considered in determining similarity in a
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`dilution by tarnishment case have not been clearly defined. See Nordstrom, Inc. v.
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`NoMoreRack Retail Grp., Inc., No. CV 12-1853, 2013 WL 1196948, at *11 (W.D. Wash.
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`Mar. 25, 2013). To resolve the question of similarity, the Court considers “the factors of
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`appearance, sound and meaning”—factors
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`that are also relevant
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`in evaluating
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`infringement. See ibid.
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`Here, VIP intended to produce, and did produce, a dog toy that mimicked Jack
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`Daniel’s trademarks and trade dress. (Doc. 241 at 13–15). VIP appropriated Jack Daniel’s
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`trade dress in every aspect; “Jack Daniel’s” became “Bad Spaniels,” “Old No. 7” became
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`3 Aided brand awareness measures the number of people who express knowledge of a
`brand or product when prompted.
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`Case 2:14-cv-02057-SMM Document 374 Filed 01/23/25 Page 10 of 49
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`“Old No. 2,” and “Tennessee whiskey” became “Tennessee carpet.” Meanwhile, the
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`square bottle shape, the nearly identical size of the two products, the ribbed neck, arched
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`lettering, filigreed border, black-and-white color scheme, fonts, shapes, and styles remain
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`virtually unchanged.
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`c. Reputational Harm
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`The TDRA’s final factor centers on reputational harm; that is, whether
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`associations with VIP’s “Bad Spaniels” product “harms the reputation of the famous
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`mark,” which, here, is Jack Daniel’s trademarks and trade dress. See 15 U.S.C. §
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`1125(c)(2)(C). Reputational harm “generally arises when the plaintiff’s trademark is
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`linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory
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`context likely to evoke unflattering thoughts about the owner’s product.” Tiffany (NJ)
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`Inc. v. eBay, Inc., 600 F.3d 93, 111 (2d Cir. 2010) (quoting Deere & Co. v. MTD Prods.,
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`Inc., 41 F.3d 39, 43 (2d Cir. 1994)). For example, there is a strong consensus among
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`courts across jurisdictions that a famous mark is tarnished when it is semantically
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`associated with a new mark that uses the famous mark to sell sex-related products. See V
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`Secret, 605 F.3d at 388 (collecting cases).
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`A trademark may also be tarnished if the mark loses its ability to serve as a
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`“wholesome identifier” of the plaintiff’s product. Starbucks Corp. v. Wolfe’s Borough
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`Coffee, Inc., 588 F.3d 97, 110 (2d Cir. 2009), citing Hormel Foods Corp. v. Jim Hensen
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`Prods., Inc., 73 F.3d 497, 507 (2d Cir. 1996). In Starbucks, the Second Circuit found that
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`the relevant inquiry is how the junior mark’s product affects positive impressions about
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`the famous mark’s product, not whether a consumer simply associates a negative-
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`sounding junior mark with the famous mark. 588 F.3d at 110.
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`Regarding reputational harm, the parties opted to present evidence in the form of
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`expert testimony.4 The determination of an expert’s credibility and the weight to be given
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`4 Expert testimony as to survey evidence is frequently admitted in trademark and false
`advertising disputes as evidence on consumer perceptions. See J. McCarthy, McCarthy
`on Trademarks and Unfair Competition § 32:158 (5th ed. 2024) (“Both trademark
`validity and infringement turn largely on factual issues of customer perception. Evidence
`of such perceptions …. includes the quantity and quality of sales and advertising,
`testimony of dealers and testimony of experts in the field.”).
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`Case 2:14-cv-02057-SMM Document 374 Filed 01/23/25 Page 11 of 49
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`to expert testimony and evidence is a matter within the discretion of the trier of fact,
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`which in a bench trial like the instance case, is a matter for the Court. See Fox v.
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`Dannenberg, 906 F.2d 1253, 1256 (8th Cir. 1990). This Court decides how much weight
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`to give the evidence and the testimony presented. Id.
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`Findings as to Dr. Itamar Simonson
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`
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`Jack Daniel’s engaged Dr. Itamar Simonson, a Professor of Marketing at Stanford
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`University. (Doc. 234 at 154–62). Dr. Simonson, relying on consumer psychology
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`research, concluded that VIP’s introduction of “Bad Spaniels” into the marketplace
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`resulted in reputational harm to Jack Daniel’s trademarks and trade dress. (Id. at 162–
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`674). Dr. Simonson has served as an expert witness on numerous occasions, providing
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`testimony on issues related to marketing, consumer behavior, trademark-related matters,
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`false advertising, and branding. (Doc. 234 at 161). Dr. Simonson has conducted,
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`supervised, or evaluated over 1,000 marketing research studies. (Id. at 155–59, 161–62).
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`Such studies related to consumer behavior, consumer information processing, brand
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`equity, trademarks, branding, marketing strategies, and advertising. (Ibid.)
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`Dr. Simonson’s opinions as to this matter are supported by empirical studies
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`evaluating two stages of establishing a likelihood of dilution by tarnishment. (Id. at 162–
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`63). First, whether the allegedly dilution product will bring or call to mind the allegedly
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`diluted mark, and second, assuming that the allegedly diluting product does call to mind
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`the allegedly diluted mark, whether it has affected the brand equity and brand association
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`of the allegedly diluted mark. (Ibid.) Dr. Simonson concluded that the first stage was
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`satisfied because the point of VIP’s product was to bring Jack Daniel’s whiskey to mind.
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`(Id. at 163). Consumer psychology research utilized to evaluate the second stage was
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`based on numerous empirical studies. The Court credits that the studies relied upon by
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`Dr. Simonson support certain conclusions that apply to all products and services
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`regarding the impact of adding a negative association onto the association of the existing
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`brand. (Ibid.)
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`Case 2:14-cv-02057-SMM Document 374 Filed 01/23/25 Page 12 of 49
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`The Associative Network Model (“ANM”) has been empirically tested and
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`verified numerous times since the 1970’s. (Id. at 164–66). Regarding application of the
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`ANM, the Court credits Dr. Simonson’s conclusion that when consumers are evaluating
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`brands, certain mental associations come to mind. (Id. at 164). In accordance with the
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`ANM and based upon Dr. Simonson’s review of Jack Daniel’s commercials and
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`advertisements, Dr Simonson’s understanding about Jack Daniel’s brand, and the key
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`messages Jack Daniel’s communicates regarding its brand values—namely authenticity,
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`integrity, independence, and loyalty—the Court credits Dr. Simonson’s testimony of
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`documented positive mental associations that come to mind when evaluating Jack
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`Daniel’s before VIP introduced the “Bad Spaniels” dog toy. (Doc. 234 at 169–70). The
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`Court credits Dr. Simonson’s conclusion regarding the effects of “Bad Spaniels” and the
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`negative mental associations that arise when defecation, feces, and poo are included
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`among the associations of customers evaluating Jack Daniel’s whiskey. (Id. at 170–72).
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`
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`Dr. Simonson relied on consumer psychology research to establish that when food
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`or beverage is associated with defecation, disgust is generated in the consumer’s mind
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`with respect to that food or beverage which has been associated with defecation. (Id. at
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`172–74, 180). Well-documented empirical research supports
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`that
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`the negative
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`associations of “Old No. 2,” referring to defecation, and “poo by weight” would create
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`disgust in the mind of the consumer evaluates Jack Daniel’s whiskey. (Id. at 171–72).
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`
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`Dr. Simonson relied on consumer psychology research in his evaluation of the
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`second stage of the likelihood of dilution by tarnishment. (Ibid.) Based on the ANM, the
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`Court credits Dr. Simonson’s conclusion that the “Bad Spaniels” product is likely to
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`tarnish Jack Daniel’s trademarks and trade dress by creating negative associations, either
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`consciously or unconsciously, and undermining the pre-existing positive associations
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`with Jack Daniel’s whiskey. (Id. at 172–74, 200). The Court credits Dr. Simonson’s
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`conclusion that such negative associations are particularly harmful for a company such as
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`Jack Daniel’s because the goods it offers for sale involve human consumption and human
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`consumption and canine excrement do not mix. (Id. at 172–74). Further, the Court credits
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`Case 2:14-cv-02057-SMM Document 374 Filed 01/23/25 Page 13 of 49
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`Dr. Simonson’s conclusion that such associations are particularly harmful to Jack
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`Daniel’s because Jack Daniel’s brand name along with its equity is a very important
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`asset. (Id. at 160).
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`Findings as to Mr. Bruce Silverman
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`VIP engaged Mr. Bruce Silverman, an advertising, marketing, and branding
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`consultant for the past 40 to 50 years, to rebut the opinion and findings of Dr. Simonson.
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`(Doc. 238 at 9–31). Mr. Silverman has worked with companies that manufacture or
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`produce goods or services in addition to his primary work with advertising and public
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`relations agencies. (Ibid.) In West Los Angeles, Mr. Silverman arranged four focus
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`groups5 to test consumer reactions to “Bad Spaniels.” (Id. at 44–50). Mr. Silverman
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`concluded that the focus groups had an overall favorable impression of Jack Daniel’s
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`upon discussion of VIP’s “Bad Spaniels” dog toy. (Ibid.)
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`
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`The Court finds that Mr. Silverman’s reliance on the West Los Angeles focus
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`groups is flawed because the groups were initially directed by the moderator that the
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`product under evaluation, “Bad Spaniels,” was a spoof product and as a result the focus
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`groups produced predetermined results. (Doc. 234 at 181–183). In other words, the
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`moderator’s biased presentation of the products tainted the groups’ conclusions.
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`Moreover, Mr. Silverman did not have expertise or specialized knowledge in trademark
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`dilution matters; rather, his experience was in advertising. (Id. at 208).
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`Here, the Court credits and gives prevailing weight to Dr. Simonson’s specialized
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`knowledge and specific expertise in consumer psychology to evaluate and conclude that
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`there is a likelihood of a tarnishing effect of the “Bad Spaniels” dog toy upon Jack
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`Daniel’s trademarks and trade dress. (Doc. 234 at 172–74, 184–87).
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`///
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`///
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`5 Focus groups are a research method whereby consumers from a target market are led
`through a discussion regarding a particular topic and give insight as to why and how
`consumers use a product or service, what is important to them in choosing a particular
`brand, what they like and don’t like about various products or services, and any special
`needs they might have that aren’t being satisfied.
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`Case 2:14-cv-02057-SMM Document 374 Filed 01/23/25 Page 14 of 49
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`
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`II.
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`FINDINGS RELATING TO INFRINGEMENT
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`Jack Daniel’s must prove three elements in order to prevail on its trademark and
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`trade dress infringement claims: (1) distinctiveness, (2) nonfunctionality, and (3) a
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`likelihood of confusion. See Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150
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`F.3d 1042, 1047 (9th Cir. 1998); see also 15 U.S.C. § 1125(a)(1)–(3). The Court
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`previously ruled as a matter of law that Jack Daniel’s trademarks and trade dress are
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`distinctive and nonfunctional. (Doc. 171). The Court’s findings in this regard were
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`affirmed on appeal by the Ninth Circuit. 953 F.3d at 1176. Thus, the only factor
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`remaining is the likelihood of consumer confusion.
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`To prevail on its trademark and trade dress infringement claims under federal and
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`state law, Jack Daniel’s must also show ownership, meaning that at least one of its
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`asserted rights was valid before VIP’s alleged infringing use began, and VIP’s use caused
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`a “likelihood of confusion” as to the source of VIP’s product. See 15 U.S.C. §§ 1114,
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`1125(a); Brookfield Commc’ns v. W. Coast Ent. Corp., 174 F.3d 1036, 1046 n.8 (9th Cir.
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`1999); Kendall-Jackson, 150 F.3d at 1047; Angel’s Gate Inc. v. All-Star Grand Canyon
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`Tours Inc., No. CV 12-8181, 2013 WL 12114580, *2 (D. Ariz. Sept. 30, 2013) (“Because
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`Arizona’s trademark infringement statute mirrors the Lanham Act, 15 U.S.C. § 1125(a),
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`cases interpreting the Lanham Act guide the interpretation of A.R.S. § 44-1451.”). Here,
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`the Court found that Jack Daniel’s asserted rights are senior and valid because they have
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`appeared on the Principal Register of the United States Patent and Trademark Office
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`since before VIP’s use began. (Docs. 224, 225); 15 U.S.C. §§ 1057(b), 1115(a); see
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`Brookfield, 174 F.3d at 1047. Furthermore, all the asserted rights are conclusively senior
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`and valid pursuant to the provis