Intellectual Property Rights

Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC

507 F.3d 252 (4th Cir. 2007)

Facts

Louis Vuitton owned famous trademarks and trade dress associated with luxury handbags.
Its identifiers included:
the LOUIS VUITTON name;
the LV monogram;
repeating floral designs;
distinctive handbag shapes and patterns.
Haute Diggity Dog sold inexpensive dog toys parodying luxury brands.
One product line was called CHEWY VUITON.
The toys imitated the general appearance of Louis Vuitton bags but deliberately altered:
“Louis Vuitton” to “Chewy Vuiton”;
“LV” symbols to “CV”;
luxury handbags into plush chew toys.
Louis Vuitton sued for:
trademark infringement;
trade-dress infringement;
dilution by blurring;
dilution by tarnishment;
copyright infringement.
The District Court ruled for Haute Diggity Dog.
Louis Vuitton appealed.

Trademark infringement depends upon likelihood of confusion.
Relevant factors include:
strength of the plaintiff’s mark;
similarity;
relatedness of goods;
marketing channels;
purchaser care;
intent;
actual confusion.
A trademark parody conveys two simultaneous messages:
recognition of the original;
an obvious, humorous difference from it.
Parody is not an automatic defence.
Its success depends on whether the humour reduces confusion.
Dilution by blurring requires a likely impairment of the famous mark’s distinctiveness.
Tarnishment requires a harmful association likely to damage the mark’s reputation.

Louis Vuitton’s marks were extremely strong and famous.
That fame allowed consumers to recognise the joke immediately.
The products copied enough features to call Louis Vuitton to mind, but changed them in obvious ways.
“Chewy Vuiton” was a humorous dog-related pun.
The substitution of CV for LV, together with the plush-toy form, communicated that the product was not a genuine luxury handbag.
The goods were also very different:
Louis Vuitton sold expensive fashion products;
Haute Diggity Dog sold low-cost chew toys.
Consumers were unlikely to believe that Louis Vuitton had become the source of parody dog toys.
Haute Diggity Dog intended to parody rather than counterfeit.
There was no evidence of meaningful actual confusion.
On dilution, Louis Vuitton argued that association alone was sufficient.
The Court disagreed.
A parody necessarily creates association, but association is not automatically blurring.
The successful joke depended upon consumers continuing to recognise the distinctiveness of Louis Vuitton’s marks.
The parody could therefore reinforce rather than weaken their unique identity.
Tarnishment was also unproved.
A harmless dog toy did not create the type of degrading or unsavoury association required to damage the luxury mark’s reputation.
The Court considered the modified design sufficiently different to avoid copyright infringement as well.

The Fourth Circuit affirmed judgment for Haute Diggity Dog.
The CHEWY VUITON toys were a successful parody and did not create likely confusion.
Louis Vuitton also failed to establish dilution by blurring or tarnishment.
Use this case for: a recognisable trademark parody may avoid infringement and dilution where it simultaneously evokes the famous mark and clearly communicates that it is a joke rather than the original.