Something To Chew On!
IP Newsletter, December 2007
Louis Vuitton Malletier ("LVM"), the well-known maker of luxury goods, sued a Las Vegas company, its principal owner and one of its retail distributors for infringement of its LOIUS VUITTON, LV marks and design copyright. Summary judgment dismissing the case was granted against LVM and it appealed to the United States Court of Appeals for the Fourth Circuit.
Although the defendant, Haute Diggity Dog LLC ("HDD"), admitted that its product names and designs were intended to mimic LVM's famous products, it still won the case. The judgment was affirmed by the Fourth Circuit Court of Appeals.
How can LVM still lose the case with such an admission? The appellate court explained in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, No. 06-2267(4th Cir. Nov. 13, 2007), available at http://pacer.ca4.uscourts.gov/opinion.pdf/062267.P.pdf.
HDD manufactures and sells chewable dog toys and other pet products. Its product names parody famous luxury products. They have the shape and design that roughly imitate the famous products parodied. They include Chewnel No 5 (Chanel No. 5), Furcedes (Mercedes), Jimmy Chew (Jimmy Choo), Dog Perignonn (Dom Perignon), Sniffany & Co. (Tiffany & Co.), Dogior (Dior) and Chewy Vuiton (Louis Vuitton).
As described by the court, Chewy Vuiton products
loosely resemble miniature handbags and undisputedly evoke LVM handbags of similar shape, design, and color. In lieu of the LOUIS VUITTON mark, the dog toy uses "Chewy Vuiton"; in lieu of the LV mark, it uses "CV"; and the other symbols and colors employed are imitations, but not exact ones, of those used in the LVM Multicolor and Cherry designs.
Both sides moved for summary judgment and the district court granted HDD's motion concluding that the products amounted to a successful parody of LVM's marks, trade dress and copyright.
On appeal, LVM argued that the Chewy Vuiton toys are likely to cause confusion because of the similarity of the names, monograms and designs. HDD countered that there is no evidence of any such confusion and pointed out that it is precisely because of the LVM marks' fame and popularity that confusion is avoided. In other words, no one will mistake the Chewy Vuiton dog toys as LVM products.
The court noted that a successful parody conveys two messages. First, it is an original item that reminds consumers of a famous mark but is clearly not the parodied famous mark. Second, the parody conveys "some articulable element of satire, ridicule, joking or amusement".
Applying these factors, the appellate observed:
First, the pet chew toy is obviously an irreverent, and indeed intentional, representation of an LVM handbag, albeit much smaller and coarser. The dog toy is shaped roughly like a handbag; its name "Chewy Vuiton" sounds like and rhymes with LOUIS VUITTON; its monogram CV mimics LVM's LV mark; the repetitious design clearly imitates the design on the LVM handbag; and the coloring is similar. In short, the dog toy is a small, plush imitation of an LVM handbag carried by women, which invokes the marks and design of the handbag, albeit irreverently and incompletely. No one can doubt that LVM handbags are the target of the imitation by Haute Diggity Dog's "Chewy Vuiton" dog toys.
The court also noted differences between the two.
The differences are immediate, beginning with the fact that the "Chewy Vuiton" product is a dog toy, not an expensive, luxury LOUIS VUITTON handbag. The toy is smaller, it is plush, and virtually all of its designs differ. Thus, "Chewy Vuiton" is not LOUIS VUITTON ("Chewy" is not "LOUIS" and "Vuiton" is not "VUITTON," with its two Ts); CV is not LV; the designs on the dog toy are simplified and crude, not detailed and distinguished. The toys are inexpensive; the handbags are expensive and marketed to be expensive. And, of course, as a dog toy, one must buy it with pet supplies and cannot buy it at an exclusive LVM store or boutique within a department store. In short, the Haute Diggity Dog "Chewy Vuiton" dog toy undoubtedly and deliberately conjures up the famous LVM marks and trade dress, but at the same time, it communicates that it is not the LVM product.
The court concluded that the Chewy Vuiton toys stopped "well short of appropriating the entire marks that LVM claims". But the analysis does not stop there. A crucial question is whether there is a likelihood of confusion between the Chewy Vuiton toys and the famous LVM handbags. The court said no.
In this case, precisely because LOUIS VUITTON is so strong a mark and so well recognized as a luxury handbag brand from LVM, consumers readily recognize that when they see a "Chewy Vuiton" pet toy, they see a parody. Thus, the strength of LVM's marks in this case does not help LVM establish a likelihood of confusion.
LVM also made a statutory claim that the "Chewy Vuiton" toys dilute its famous and distinctive marks because they impair the distinctiveness and harm the reputation of its famous marks.
LVM argued that allowing HDD to use similar marks will obviously blur and impair distinctiveness and thereby dilute its famous marks. Ironically, the court felt that the successful parody would have an opposite effect.
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.
And so the court concluded that the Chewy Vuiton products are "not so similar as to be likely to impair the distinctiveness of LVM's famous marks".
If LVM thought the court would be sympathetic, it was wrong. The court seemed to be telling LVM to grow up and be a good sport about being made the subject of the parody.