Haute Diggity affirmed

Louis Vuitton Malletier v. Haute Diggity Dog (4^th Cir. 2007)

District court ruling discussed here; pictures of Chewy Vuiton dog toys here. The Court of Appeals affirmed the grant of summary judgment in favor of HDD on LV’s copyright, trademark infringement, and trademark dilution claims.

Trademark infringement was easy. As the court said, “[t]he dog toy irreverently presents haute couture as an object for casual canine destruction. The satire is unmistakable.” The court emphasized that, in parody cases, the valence of several key confusion factors is reversed – mark strength decreases the likelihood of confusion by making deviation in the form of parody easier to recognize. (I think this is true of many non-parodic deviations as well – but I don’t expect courts to agree any time soon.)

Of some interest is the fact that many orders for HDD’s products misspelled “Chewy Vuiton” as “Chewy Vuitton,” making it closer to LV’s mark. But those invoices, which often contained orders for other HDD parody products, made clear that the buyers understood the source; they were confused about the name of HDD’s product, not about source.

Dilution: LV argued that parodies necessarily cause blurring, and that HDD’s products would cause tarnishment because they pose a choking hazard to some dogs. According to the Fourth Circuit, dilution requires (1) a famous mark, (2) defendant’s use in commerce of a diluting mark, (3) similarity between the famous mark and the defendant’s mark that 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. Crucially, the court thought the first three elements were clearly satisfied here. The parody “gives rise to an association” between the marks.

Rather than applying the statutory factors from the TDRA, the district court simply held that parodies don’t dilute because they depend on retaining a continuing association with the original. (The court of appeals politely said that the district court didn’t “directly apply” the statutory factors.) On appeal, LV argued that any use of an imitation of its mark would cause dilution as a matter of law, because LV’s use has to date been exclusive. The court of appeals perceived this as overreaching. Distinctiveness, it explained, “refers to the public’s recognition that the famous mark identifies a single source of the product using the famous mark” (emphasis added). Dilution, in this understanding, is simply about the information conveyed by the mark, not any emotional associations – it is about the mark, not the brand.

Conducting its own independent analysis of the six-factor TDRA test, the panel concluded that the district court had the right answer. Parody is not a complete defense when the defendant uses the parody as its own designation of source, as here. The parody exclusion only applies to non-source-identifying uses. But the TDRA doesn’t require courts to ignore the significance of parody even when the challenged use is a trademark use.

Thus, the court used the same ju-jitsu on the dilution factors as applied to parody as it did with confusion. “Indeed, by 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.” Because mark strength favors the defendant in such an analysis, and because only strong, famous marks get protection in the first place, parodies start out ahead in the multifactor analysis. So also with the other factors: Intent to parody is not the same thing as dilutive intent; associations created by parody are not necessarily likely to decrease distinctiveness.

One way to read this is that a successful parody is a complete defense to dilution, even when used as a mark; the court’s analysis is not specific to anything about dog toys or high fashion. One phrase holds out the prospect that a properly conducted survey might help: “the facts impose on LVM an increased burden to demonstrate that the distinctiveness of its famous marks is likely to be impaired by a successful parody” (emphasis added). But what a survey might ask about is hard to figure out, since association alone – the usual focus of inquiry – is insufficient, at least in a parody case.

The court also limits its holding another way, perhaps attempting to avoid the conclusion that all successful parodies are nondiluting: “It is important to note, however, that this might not be true if the parody is so similar to the famous mark that it likely could be construed as actual use of the famous mark itself.” Use of LV’s “actual marks” as a defendant’s own marks could dilute, even as parody. (What that would look like is unclear to me.) Here, HDD’s dog toys “imitate and suggest, but [do] not use, the marks of a high-fashion LOUIS VUITTON handbag.” The “imperfect[ion]” of the use prevented any diminution in the link between the pristine LV mark and LV products.

Note: The Ninth Circuit takes a looser stance towards the amount of similarity required for dilution (at least until Judge Kozinski gets his pen on the TDRA), though it hasn’t yet considered a parody case.

Note the second: As with many recent trademark cases, “use” is a key term, but -- perhaps because it is so important -- it goes undefined. “Use” here seems to mean an actual replication, rather than a distinguishable facsimile.

The court also rejected the tarnishment claim because there was simply no evidence of a choking hazard. (Also, if the parody is recognized as a parody, even a product that reflected badly on the parodist should not harm the trademark owner’s reputation.)

On the copyright claim, the court observed briefly that LV was attempting to shoehorn copyright into what was really a trademark case. Applying copyright fair use to these facts was “awkward,” but, without further explanation, the court concluded that there was no copyright infringement.