The Fourth Circuit court of appeals recently handed Louis Vuitton its latest (well deserved) defeat in its suit against dog-toy maker, Chewy Vuiton in Haute Diggity Dog v. Louis Vuitton, ___ F.3d ___ (4th Cir. 2007). The world is a better place for it.
In this corner, the plaintiff. Everyone knows the plaintiff. They make crap, stamp an LV logo on it, and that LV convinces some consumers that a $50 bag is now worth $450. When the revolution comes, they will deliver the heads of the executed in Louis Vuitton handbags.
And, in this corner, the defendant. Haute Diggity Dog is a little Nevada company that makes pet toys that parody “prestigious” brands. For example, Chewnel No. 5 (Chanel No. 5), Furcedes (Mercedes), Jimmy Chew (Jimmy Choo), Dog Perignonn (Dom Perignon), Sniffany & Co. (Tiffany & Co.), and Dogior (Dior), and of course, the parody that started the suit Chewy Vuiton.
Apparently Louis Vuitton didn’t get the humor memo. LV filed suit for trademark infringement, trademark dilution, and copyright infringement.
Lets dispense with the copyright infringement claim first. The Court found that to be of such low merit that it barely even discussed it.
With respect to the trademark infringement claim, Louis Vuitton needed to show that it has a valid mark, that Chewy Vuiton used an imitation of that mark, and Chewy Vuiton use was likely to cause confusion. The only true issue was whether there was a likelihood of confusion. The court noted the Fourth Circuit’s standard for likelihood of confusion as articulated in Pizzeria
Uno Corp. v. Temple, 747 F.2d 1522 (4th Cir. 1984), but correctly narrowed the issue down to whether the Chewy Vuiton mark was a successful parody of the Louis Vuitton mark.
In a quote reminiscent of something from “Family Guy,” the Fourth explained parody to those stupid enough not to know its definition.
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.” People for the Ethical Treatment of Animals v. Doughney (“PETA”), 263 F.3d 359, 366 (4th Cir. 2001) (internal quotation marks omitted). “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.” Id. (internal quotation marks and citation omitted). This second message must not only differentiate the alleged parody from the original but must also communicate some articulable element of satire, ridicule, joking, or amusement. Thus, “[a] parody relies upon a difference from the original mark, presumably a humorous difference, in order to produce its desired effect.” Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1486 (10th Cir. 1987) (finding the use of “Lardashe” jeans for larger women to be a successful and permissible parody of “Jordache” jeans).
Wow… “It’s a parody, you idiots” would have sufficed. But, thank you Fourth Circuit for that great articulation of the meaning of “parody.” It should find its way into many future briefs.
The Court concluded that the factors articulated above favored Haute Diggity. Interestingly, the Fourth actually called this “the PETA criteria.” (interesting because the Fourth Circuit didn’t understand parody when it wrote the PETA decision).
We conclude that the PETA criteria are amply satisfied in this case and that the “Chewy Vuiton” dog toys convey “just enough of the original design to allow the consumer to appreciate the point of parody,” but stop well short of appropriating the entire marks that LVM claims.
With respect to the dilution claim, the Fourth had an opportunity to make a complete mess of the law, yet again, but it mercifully declined to do so. Louis Vuitton begged it to by arguing that a parody “automatically” gives rise to “actionable dilution.”
Nevertheless, Chewy Vuiton had a bit of a problem here. Parodying a trademark is legally protected as fair use. That is why Ralph Nader was allowed to use his parody of the MasterCard “priceless” campaign in his political ads. See Mastercard v. Nader (decided under the prior trademark dilution act, but the principles are the same).
In this case, things are a little different. Haute Diggity not only parodied the mark, but parodied it by making its own mark a parody of the original. That is tougher to get away with. While fair use permits the parodying of a mark, there is a statutory exclusion for parodies that the parodier uses as a source identifier for its own goods. In other words, a comic strip that showed a dog tearing apart a Louis Vuitton bag with the caption “Chewy Vuitton” would be protected fair use. But, selling products under the trademark Chewy Vuiton is not. See 15 U.S.C.A. § 1125(c)(3)(A)(ii) ( The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection: (A) Any fair use . . . other than as a designation of source for the person’s own goods or services, including use in connection with . . . parodying. . . .)
“parody is not automatically a complete defense to a claim of dilution by blurring where the defendant uses the parody as its own designation of source, i.e., as a trademark.”
That doesn’t mean that Haute Diggity was doomed. It just made the parody defense less robust. The entire point of a dilution claim is the plaintiff believes that the defendant’s actions harm the ability of the plaintiff’s mark (in this case Louis Vuitton) to distinguish its goods from those made by others. In analyzing this issue, the Fourth Circuit did not throw out Haute Diggity’s parody and fair use arguments altogether:
[W]hile a defendant’s use of a parody as a mark does not support a “fair use” defense, it may be considered in determiningwhether the plaintiff-owner of a famous mark has proved its claim that the defendant’s use of a parody mark is likely to impair the distinctiveness of the famous mark.
The court noted that Haute Diggity mimicked the Louis Vuitton (and other) marks, but it did not do so with such accuracy that it created a danger that Louis Vuitton’s marks would lose the ability to distinguish LV’s products from those of its competitors.
Haute Diggity Dog designed a pet chew toy to imitate and suggest, but not use, the marks of a high-fashion LOUIS VUITTON handbag. It used “Chewy Vuiton” to mimic “LOUIS VUITTON”; it used “CV” to mimic “LV”; and it adopted imperfectly the items of LVM’s designs. We conclude that these uses by Haute Diggity Dog were not so similar as to be likely to impair the distinctiveness of LVM’s famous marks.
It appears that the Fourth Circuit has finally decided to fully atone for its unprincipled decision in People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001). In that case, the Fourth held that a website, peta.org, which was devoted to a humorous site called “People Eating Tasty Animals,” was somehow not an effective parody of “People for the Ethical Treatment of Animals.” Some of my students were asking me if this meant that parody was non-existent in the Fourth Circuit. I predicted that one day the Fourth would find a way to squirm out of its 2001 stupidity. I am impressed that it did so in this manner. No better way to cure a mistake than to turn the mistake into a “test” and then simply make it seem like the earlier case was limited to its facts! Nice work Fourth!