In a decision that surprised many trademark owners (including the INTA which had filed an amicus brief in support of the trademark owner’s position), the Court of Appeals for the Fourth Circuit in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, 507 F.3d 252 (4th Cir. 2007), held that “Chewy Vuiton” for dog chew toys did not infringe or dilute the trademarks of Louis Vuitton, the high-end handbag manufacturer. In affirming the district court’s decision on the confusion portion of the case, the appeals court agreed that Nevada-based Haute Diggity Dog’s use of “Chewy Vuiton” represented a successful parody of Louis Vuitton products, and after considering this fact as well as the traditional likelihood of confusion factors, agreed that consumer confusion was not likely. On the dilution side, although the Appeals Court approached the issue in a manner slightly different than did the district court, it came to the same conclusion, namely that Louis Vuitton had not established that the distinctiveness of its marks was likely to be impaired by Haute Diggity’s use of “Chewy Vuiton.”
The Haute Diggity Dog chew toys that were the subject of this controversy were small imitations of Louis Vuitton handbags. Although the shape, coloring and overall design were similar to that of a Louis Vuitton handbag, a “CV” logo was used instead of the famous “LV” mark, and “Chewy Vuiton” was used rather than “Louis Vuitton.”
The court of appeals began its analysis by considering whether “Chewy Vuiton” as applied to dog chews represented a successful parody. Under Fourth Circuit U.S. law, a “parody” is a defined “as simple form of entertainment conveyed by juxtaposing an irreverent representation of a trademark with the idealized image created by the mark’s owner.” PETA v. Doughney, 263 F. 3d 359, 366 (4th Cir. 2001). In order to succeed at this, a parody must convey two simultaneous and yet contradictory messages: namely that it is the original, but also that it is not the original and is instead a parody. Id. The second message is important because it must not only differentiate the parody from the original, but it must also “communicate some articulable element of satire, ridicule, joking or amusement.” Louis Vuitton Malletier, 507 F.3d at 260.
Applying this definition, the court concluded that the “Chewy Vuiton” chews were indeed successful parodies of Louis Vuitton products. The similar design and the name “Chewy Vuiton” clearly evoked Louis Vuitton’s famous handbags. At the same time, however, the chews were also clearly not manufactured by Louis Vuitton. They were dog chews (which Louis Vuitton does not make), they were inexpensive, and “Chewy Vuiton” is not the same mark as LOUIS VUITTON.
Having found that the chews constituted a successful parody was not the end of the inquiry though, because, as the court pointed out, there can be confusing parodies and non-confusing parodies: “The finding of a successful parody only influences the way in which the [traditional likelihood of confusion] factors are applied.” Louis Vuitton Malletier, 507 F.3d at 261. Accordingly, the court must then move on to analyze whether the parody is likely to cause confusion. To reach the decision on likelihood of confusion, the court reviewed the traditional likelihood of confusion factors considered by courts in the Fourth Circuit, namely: (1) the strength or distinctiveness of the plaintiff’s mark; (2) the similarity of the two marks; (3) the similarity of the goods; (4) the similarity of the facilities the two parties used in their businesses; (5) the similarity of the advertising used by the two parties; (6) the defendant’s intent; and (7) actual confusion. See Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984). The appeals court agreed with the district court’s finding that all of these factors favored the defendant.
In considering the first factor, the court noted that while the LOUIS VUITTON mark is clearly strong and distinctive, that did not help to establish a likelihood of confusion in this case because, in the case of parody, a strong mark’s fame is precisely the mechanism by which confusion is avoided. Similarly, with regard to the second factor, while there was similarity between the two marks in this case, such similarity is the essence of a parody, and it was coupled here with enough obvious differences that confusion was unlikely. The goods were not similar (the third factor), nor were the business facilities or advertising channels of the two parties (the fourth and fifth factors). Finally, while Haute Diggity Dog intended to create a parody, it did not intend to confuse the public, and in fact no actual confusion had taken place (the sixth and seventh factors).
Recognizing that “Chewy Vuiton” was an obvious parody, and applying the factors for likelihood of confusion, the Fourth Circuit affirmed the district court’s decision that Haute Diggity’s use of “Chewy Vuiton” was not likely to cause confusion.
Turning to the dilution claim, the court began by noting that although the dilution statute provides that a “fair use” of a mark is a complete defense to an allegation of dilution, and although a parody can be considered a “fair use”, the “fair use” defense does not automatically extend to a parody that functions as a designation of source (i.e., as a trademark). Louis Vuitton Malletier, 507 F.3d at 266. As with the likelihood of confusion analysis, the fact that a particular term is used as a parody is part of the relevant inquiry as to whether the use of the term is such that it will diminish the distinctiveness of the famous mark, thereby diluting it.
Applying the facts to the dilution factors outlined in the statute, the court was readily able to conclude that the LOUIS VUITTON marks were indeed famous, distinctive and strong. Despite this, however, the court explained that under the facts of the case (i.e., the parodical nature of the “Chewy Vuiton” name), Louis Vuitton bore the increased burden of demonstrating that the distinctiveness of its marks would be diminished by the parody. The court pointed out that the very mimicking nature of the “Chewy Vuiton” mark simultaneously “communicates that it is not the famous mark.” Id. Moreover, the court noted that “because the famous mark is particularly strong and distinctive, it becomes more likely that a parody will not impair the distinctiveness of the mark.” Id. The court went on to conclude that “because Haute Diggity Dog’s ‘Chewy Vuiton’ marks are a successful parody . . . they will not blur the distinctiveness of the famous mark as a unique identifier of source.” Id.