507 F.3d 252 (4th Cir. 2007)
Louis Vuitton Malletier S.A., a French corporation located in Paris, manufactures luxury luggage, handbags, and accessories that it markets and sells worldwide.1 Haute Diggity Dog, LLC, a relatively small Nevada corporation, manufactures and sells nationally a line of plush pet chew toys and beds whose names parody elegant high-end brands.2 In 2002 Louis Vuitton Malletier commenced this action against Haute Diggity Dog, its principal owner Victoria D.N. Dauernheim, and retailer Woofies, LLC, alleging trademark counterfeiting, trademark infringement, trade dress infringement, unfair competition, trademark dilution, copyright infringement of the Multicolor design, and related state-law violations.3
Louis Vuitton Malletier has registered trademarks for LOUIS VUITTON in connection with luggage and handbags, for a stylized LV monogram, and for a monogram canvas design consisting of repetitions of the LV mark along with stars, diamonds, and flowers.4 In 2002 it adopted a brightly colored version of the Monogram Canvas mark created with Japanese artist Takashi Murakami, for which it obtained a copyright in 2004, and in 2005 it adopted another design consisting of repetitions of the LV mark and smiling cherries on a brown background.5
Between 2003 and 2005 Louis Vuitton Malletier spent more than $48 million advertising products using its marks and designs, including more than $4 million for the Multicolor design.6 The press published photographs showing celebrities carrying these handbags, including Jennifer Lopez and Madonna, among others.7 The handbags retailed in the range of $995 for a medium handbag to $4500 for a large travel bag.8
Haute Diggity Dog produces plush Chewy Vuiton dog toys that loosely resemble miniature handbags and evoke Louis Vuitton Malletier handbags of similar shape, design, and color, substituting Chewy Vuiton for LOUIS VUITTON, CV for LV, and using imitative but not exact symbols and colors from the Multicolor and Cherry designs.9 These toys are sold primarily through pet stores for less than $20 and are marketed alongside other parody pet products such as Chewnel No. 5 and Dog Perignonn.10 Louis Vuitton Malletier markets a limited selection of luxury pet accessories bearing its marks but does not make dog toys.11
On cross-motions for summary judgment the district court granted judgment to Haute Diggity Dog on all claims, resting its analysis principally on the conclusion that the products amounted to a successful parody.12 Louis Vuitton Malletier appealed, and the United States Court of Appeals for the Fourth Circuit heard argument on September 26, 2007, before issuing its decision on November 13, 2007.13
Whether Haute Diggity Dog's marketing and sale of Chewy Vuiton dog toys is likely to cause confusion with Louis Vuitton Malletier trademarks?14
To prove trademark infringement under 15 U.S.C. § 1114(1)(a), the plaintiff must establish ownership of a valid and protectable mark, the defendant's use in commerce of a reproduction, counterfeit, copy, or colorable imitation of that mark without consent, and a likelihood of confusion.15 Likelihood of confusion is assessed through the nonexclusive Pizzeria Uno factors: the strength or distinctiveness of the plaintiff's mark, the similarity of the two marks, the similarity of the goods or services, the similarity of facilities, the similarity of advertising, the defendant's intent, and actual confusion.16
No. Louis Vuitton Malletier owns strong and distinctive marks that are famous worldwide.17 Haute Diggity Dog's Chewy Vuiton products constitute a successful parody that simultaneously evokes and distinguishes itself from those marks by using Chewy Vuiton instead of LOUIS VUITTON, CV instead of LV, and imitative but inexact designs and colors on a plush dog toy rather than a luxury handbag.18 The goods differ sharply because Louis Vuitton Malletier sells expensive fashion accessories through its own boutiques while Haute Diggity Dog sells inexpensive pet toys through pet stores.19 The facilities and advertising channels show minimal overlap.20
The intent is to parody rather than confuse, and no actual confusion exists.21 These facts applied to the Pizzeria Uno factors demonstrate no likelihood of confusion.22
Haute Diggity Dog's marketing and sale of Chewy Vuiton dog toys is not likely to cause confusion with Louis Vuitton Malletier trademarks.23
Whether Haute Diggity Dog's use of Chewy Vuiton marks is likely to dilute Louis Vuitton Malletier famous marks by blurring?24
Under the TDRA, 15 U.S.C.A. § 1125(c), dilution by blurring requires proof that the plaintiff owns a famous and distinctive mark, the defendant has commenced use of a mark in commerce, similarity between the marks gives rise to an association, and that association is likely to impair the distinctiveness of the famous mark. Courts consider all relevant factors including the degree of similarity, the distinctiveness and recognition of the famous mark, exclusive use, intent to associate, and actual association.25
No. Louis Vuitton Malletier owns famous and distinctive marks that are icons of high fashion and have been used exclusively since 1896 with over $48 million spent on advertising.26 Haute Diggity Dog's Chewy Vuiton marks create an association through parody.27 The successful parody intentionally communicates that the dog toy is not the famous mark while satirizing it.28 Because the famous marks are so strong, the parody enhances rather than impairs their distinctiveness as unique identifiers.29
The degree of similarity is insufficient to destroy the parody's effect, and Haute Diggity Dog did not use the actual LOUIS VUITTON or LV marks themselves.30 These facts establish that the distinctiveness of the famous marks is not likely to be impaired.31
Haute Diggity Dog's use of Chewy Vuiton marks is not likely to dilute Louis Vuitton Malletier famous marks by blurring.32
Whether Haute Diggity Dog's use of Chewy Vuiton marks is likely to dilute Louis Vuitton Malletier famous marks by tarnishment?33
Under the TDRA, 15 U.S.C.A. § 1125(c)(2)(C), dilution by tarnishment requires proof that similarity between the defendant's mark and the famous mark creates an association that harms the reputation of the famous mark.34
No. Louis Vuitton Malletier owns famous marks, and Haute Diggity Dog's Chewy Vuiton products create an association through parody.35 Louis Vuitton Malletier offered only speculation that a dog might choke on the inexpensive plush toy and no evidence that any dog has choked or that the association harms the reputation of the marks.36 The record contains no support for reputational harm beyond conjecture about product quality and a hypothetical choking incident.37
Haute Diggity Dog's use of Chewy Vuiton marks is not likely to dilute Louis Vuitton Malletier famous marks by tarnishment.38
Whether Haute Diggity Dog's Chewy Vuiton products constitute counterfeits of Louis Vuitton Malletier marks?39
A counterfeit mark is defined under 15 U.S.C. § 1127 as a spurious mark that is identical with, or substantially indistinguishable from, the plaintiff's mark.40
No. Louis Vuitton Malletier owns the LOUIS VUITTON and LV marks.41 Haute Diggity Dog uses Chewy Vuiton and CV along with imitative but not exact designs and colors on its dog toys.42 The substitutions and alterations make the marks neither identical nor substantially indistinguishable from the protected marks.43
Haute Diggity Dog's Chewy Vuiton products do not constitute counterfeits of Louis Vuitton Malletier marks.44
Whether Haute Diggity Dog infringed Louis Vuitton Malletier trade dress?45
Trade dress infringement claims under 15 U.S.C. § 1125(a)(1) and Virginia common law are evaluated using the same likelihood-of-confusion factors applied to trademark infringement claims.46
No. Louis Vuitton Malletier's trade dress claims rest on the same facts as its trademark claims.47 Haute Diggity Dog's Chewy Vuiton products create no likelihood of confusion under the Pizzeria Uno factors because the parody is successful, the products and marketing channels differ, and no actual confusion exists.48 The trade dress claims therefore rise or fall with the trademark claims.49
Haute Diggity Dog did not infringe Louis Vuitton Malletier trade dress.50
Whether Haute Diggity Dog infringed Louis Vuitton Malletier copyright in the Multicolor design?51
Copyright infringement requires proof of ownership of a valid copyright and copying of constituent elements that are original. Fair use under 17 U.S.C. § 107 may protect a parody that uses altered elements of the original for purposes of comment or criticism.52
No. Louis Vuitton Malletier owns a copyright in the Multicolor design.53 Haute Diggity Dog used only altered elements of that design on its Chewy Vuiton dog toys as part of a successful parody that comments on the original by juxtaposing irreverent representation with the idealized image.54 The use qualifies as fair use and does not support a claim for copyright infringement.55
Haute Diggity Dog did not infringe Louis Vuitton Malletier copyright in the Multicolor design.56