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Trademark Law Commentary
Haute Diggity Dog Court Applies Tests in Determining What a Successful Parody Is
Louis Vuitton Malletier S.A. v. Haute Diggity Dog, L.L.C.
Posted: 02/25/2008
By: D. Dennis La, Esq.
Companies Mentioned: Haute Diggity Dog, LLC, International Trademark Association, Louis Vuitton Malletier S.A., Woofies, LLC d.b.a. Woofie’s Pet Boutique
Introduction
The case Louis Vuitton Malletier v. Haute Diggity Dog, 507 F.3d 252 (4th Cir. 2007) was the first case an appellate court heard under the Trademark Dilution Revision Act of 2006 (TDRA). Though the TDRA generally favors companies like Louis Vuitton that try to protect their famous trademarks from dilution, the Haute Diggity Dog court affirmed the lower court’s decision against Louis Vuitton, finding that the defendant’s successful parody would not dilute the Louis Vuitton brand.
Detailed Commentary
Background
Louis Vuitton Malletier (“LVM”) is a Paris-based manufacturer of luxury luggage, handbags and accessories, primarily under the famous and distinct brand name LOUIS VUITTON. LVM has numerous trademarks registered to protect its brand.
LVM sued Haute Diggity Dog (“HDD”), a small company that sells a line of pet chew toys and beds that parody high-end brands with names like “Furcedes” (parodying Mercedes) and “Chewnel No. 5 (Chanel No. 5). LVM claimed that HDD’s small plush chew toy called the “Chewy Vuiton” infringed on LVM’s trademarks, trade dress and copyrights. The Chewy Vuiton toy resembled a LOUIS VUITTON bag, with colors, shapes and markings evocative of, but not identical to, a high-end LVM bag.
On cross motions for summary judgment, the district court sided with HDD on all counts, concluding that, as a successful parody, the Chewy Vuiton toy did not create consumer confusion and did not dilute the LVM brand. LVM appealed on all counts. Though the appellate court addressed all of LVM’s claims to some degree, the most significant discussions are those regarding LVM’s trademark infringement claim and, more importantly, its claims under the new provisions of the Trademark Dilution Revision Act of 2006 (TDRA). Accordingly, only those two elements are discussed in this commentary.
No trademark infringement because no likelihood of confusion
The court first addressed LVM’s contention that the Chewy Vuiton infringed on its trademarks and trade dress because the design, marketing and sale of the Chewy Vuiton dog toys were likely to cause confusion in the marketplace. HDD claimed that its successful and deliberate marketing of its products as parodies ensures no confusion.
In determining whether a product creates a likelihood of confusion with another product, the federal court has developed a list of nonexclusive factors, set forth in Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984). Those factors are: 1) the strength or distinctiveness of the plaintiff’s mark, 2) the similarity of the two marks, 3) the similarity of the goods or services the marks identify, 4) the similarity of the facilities the two parties use in their businesses, 5) the similarity of the advertising used by the two parties, 6) the defendant’s intent, and 7) actual confusion. Id.
But before the Haute Diggity Dog court applied the Pizzeria Uno factors, it first clarified the meaning of a “parody.” The court stated: “For trademark purposes, ‘[a] parody is defined as a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner.” 507 F.3d at 260 (citing People for the Ethical Treatment of Animals v. Doughney, 263 F3d 359, 366 (4th Cir. 2001). Under that definition, the Haute Diggity Dog court found that the Chewy Vuiton was clearly a parody, stating: “The dog toy irreverently presents haute couture as an object for casual canine destruction. The satire is unmistakable.” Id. at 261.
The court recognized that merely determining that the Chewy Vuiton was a parody did not end its analysis – it still had to determine whether that parody created a likelihood of confusion under the Pizzeria Uno factors. The court determined that most factors supported HDD, while the factors that on their face seemed to weigh in LVM’s favor actually furthered HDD’s case. For example, the strength of LVM’s mark and the imperfect similarity between LVM’s mark and the Chewy Vuiton are exactly what identify HDD’s product as a successful parody, thus eliminating any chance of confusion. Id. at 261-262.
The Chewy Vuiton did not dilute the LOUIS VUITTON brand
The most significant part of the Haute Diggity Dog case is the court’s analysis of LVM’s claims under the Trademark Dilution Revision Act of 2006 (TDRA) – the first time a TDRA claim had come before an appellate court. Prior to the enactment of TDRA, the Supreme Court had held that the Federal Trademark Dilution Act required proof of actual dilution and actual economic harm resulting from a defendant’s conduct. Congress enacted the TDRA in 2006 primarily to overrule that Supreme Court decision and statutorily require a plaintiff to prove only a “likelihood” of dilution.
The TDRA enables the owner of a famous mark to get an injunction against another who “commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” 15 USC §1125(c)(1). “Dilution by blurring” is the “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” 15 USC §1125(c)(2)(B). “Dilution by tarnishment” is the “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.” 15 USC §1125(c)(2)(C).
The court clarified that to state a successful claim of dilution under the TDRA, the plaintiff must prove: 1) that the plaintiff owns a famous mark that is distinctive, 2) that the defendant has commenced using a mark in commerce that allegedly is diluting the famous mark, 3) that a similarity between the defendant’s mark and the famous mark gives rise to an association between the marks, and 4) that the association is likely to impair the distinctiveness of the famous mark or likely to harm the reputation of the famous mark. 507 F.3d at 264-265. The fourth element was the source of the dispute between the parties, and the court’s analysis.
Chewy Vuiton did not dilute by blurring the LOUIS VUITTON brand
To determine whether a mark is likely to dilute a famous mark through blurring, the TDRA directs court to consider all relevant factors, including these six specifically set forth in the statute: 1) The degree of similarity between the two marks; 2) the degree of inherent or acquired distinctiveness of the famous mark; 3) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; 4) the degree of recognition of the famous mark; 5) whether the user of the mark or trade name intended to create an association with the famous mark; and 6) any actual association between the mark and the famous mark. 15 USC §1125(c)(2)(B).
LVM argued that, under TDRA, any use of an imitation of its mark would cause dilution as a matter of law, since LVM’s use of the distinctive and famous mark had been exclusive prior to HDD. 507 F.3d at 265-266. But the court said that position misconstrues the TDRA. Id.
The Haute Diggity Dog court pointed out that the district court had acknowledged the TDRA factors but had failed to perform any analysis of the case under them, or offer any explanation of which factors it found persuasive for review purposes. However, upon applying the factors itself, the appellate court reached the same conclusion as the district court—that there was no dilution.
Before applying the factors, the court noted that fair use is a complete defense under the TDRA, and parody can be considered fair use unless the parody itself is “a designation of source for the person’s own goods or services.” 507 F.3d at 266 (citing 15 USC §1125(c)(3)(A)(ii)). Because HDD’s parody was its own designation of source, the fair use defense was not applicable. However, as the court noted, the TDRA does not require a court to ignore parody or exclude it as a factor in the court’s consideration – indeed, the TDRA permits a court to consider “all relevant factors.” Id. at 266-267 (citing 15 USC §1125(c)(2)(B)).
In fact, when the court applied the six factors, which on their face seem to weigh in LVM’s favor, the fact of the parody swung every factor the other way, in favor of HDD. The court suggested that the existence of a successful parody would not dilute the famous brand but in fact may make it even more famous. “(B)y making the famous mark an object of the parody, a successful parody might actually enhance the famous mark’s distinctiveness by making it an icon,” wrote the court. “The brunt of the joke becomes yet more famous.” 507 F.3d at 267.
The court also stated that although HDD had closely imitated LVM’s famous mark, it did so imperfectly by design, which ensures identification of separate sources. “Haute Diggity Dog intentionally associated its marks, but only partially and certainly imperfectly, so as to convey the simultaneous message that it was not in fact a source of LVM products. Rather, as a parody, it separated itself from the LVM marks in order to make fun of them.” 507 F.3d at 268. Because HDD’s mark was deliberately different from LVM’s and, more importantly, because it was a successful parody, the court determined that there was no dilution by blurring. Id.
Chewy Vuiton did not dilute by tarnishment the LOUIS VUITTON brand
In order to set forth a claim a dilution by tarnishment, the owner of a famous mark must show that another’s similar mark harms the famous mark owner’s reputation. LVM argued that there was a possibility that some dog could choke on a flimsy “Chewy Vuiton” toy and that dog’s confused owner might go on a rampage against LOUIS VUITTON. The court rejected this speculative argument, as there was no support in the record for the proposition that a dog might choke on the Chewy Vuiton chew toy. Without any factual basis for its argument, LVM failed to make a successful claim for dilution by tarnishment.
Conclusion
The Haute Diggity Dog case seems to suggest that the owner of a famous mark has little hope of enjoining a successful parody. Though mark strength typically favors the mark’s owner in infringement and dilution cases, it has the opposite effect in cases involving a parody – the strength of the mark actually enhances the parody. Successful parodies are strongly favored in the multi-factor analysis. The case strongly suggests that a successful parody is an absolute defense.
The only glimmer of hope offered to owners of famous marks is one sentence in the opinion: “(T)he factors impose on LVM an increased burden to demonstrate that the distinctiveness of its famous marks is likely to be impaired by a successful parody.” 507 F.3d at 267. This suggests that the right evidence – perhaps a survey – may enable the owner of a mark to enjoin a parody.
The author, D. Dennis La, Esq., is an associate in the litigation department of Zuber & Taillieu LLP.
Trademark Law Summary
Read the related Trademark Law summary: 4th Circuit: No Likelihood of Confusion Between “Chewy Vuiton” and “Louis Vuitton” Trademarks
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