U.S. Court of Appeals for the 4th Circuit affirmed district court’s grant of summary judgment in favor of toy maker who makes pet chew toys that are parodies of luxury brands and products (such as Chewy Vuiton, Jimmy Chew, Dog Perignonn, and Sniffany & Co). The particular chew toy in this case was a small, plush imitation of a handbag that was labeled “Chewy Vuiton” and that was similar with respect to shape, monogram (“CV” vs. “LV”), repetitious design and coloring to Louis Vuitton handbags. Plaintiff Louis Vuitton had filed suit for, among other things, trademark counterfeiting, trademark and trade dress infringement, trademark dilution, and copyright infringement.
The Fourth Circuit held that the toys were a successful parody of the plaintiff’s handbags, trademarks and trade dress. The court found that the toys are an irreverent and intentional representation of the plaintiff’s handbags, that no one can doubt that the plaintiff’s handbags are the target of the imitation, but that no one can doubt the defendant’s toys are not the idealized image of the mark created by the plaintiff. The court described the differences between the products as follows: “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…. [T]he 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.” Finding the satire unmistakable, the court found the dog toy to be “a comment on the rich and famous, on the Louis Vuitton name … and on conspicuous consumption in general.”
However, finding the toy maker’s parody successful did not end the inquiry into the issue of whether the products created a likelihood of confusion. Accordingly, the court applied each of the Pizzeria Uno factors considered in the circuit in determining if a product creates a likelihood of confusion (Pizzeria Uno v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984)). Notably, the court found that the strength of the plaintiff’s marks – a finding that usually favors a plaintiff – did not necessarily favor Louis Vuitton. “In cases of parody, a strong mark’s fame and popularity is precisely the mechanism by which likelihood of confusion is avoided.” Having applied each factor, and finding that none of the factors favored plaintiff largely due to the nature of a parody, the court also held that plaintiff failed to demonstrate any likelihood of confusion between the products and affirmed the grant of summary judgment in favor of the toy maker on the trademark infringement issue.
The court next turned to plaintiff’s claim that the dog toys diluted its marks by blurring, and found that the only issue for resolution was whether the association between the toy maker’s marks and Louis Vuitton’s marks was likely to impair the distinctiveness of the marks. The trial court had held that the famous Louis Vuitton mark’s strength was not likely to be blurred by a parody dog toy product. In reviewing this holding, the circuit court found that the trial court did not adequately address the six factors enumerated in the dilution statute (the Trademark Dilution Revision Act of 2006, 15 U.S.C. § 1125(c)), stating “a trial court must offer a sufficient indication of which factors it has found persuasive and explain why they are persuasive so that the court’s decision can be reviewed.” Nonetheless, applying the statutory factors, the court concluded the dog toys would not blur the distinctiveness of the famous mark as a unique identifier of its source. Having rejected plaintiff’s claim for dilution by blurring, the court quickly disposed of the claim of dilution by tarnishment, finding plaintiff relied only on speculation that use of the “Chewy Vuiton” mark on dog toys harms the reputation of Louis Vuitton. The court then went on to affirm summary judgment for the toy maker on the remaining claims.