Fourth Circuit Finds No Dilution in Chewy Vuiton Case

Case: Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, Case No. 06-2267, Fourth Circuit Court of Appeals (November 13, 2007)

The One Sentence Summary: The Fourt Circuit found no dilution by "Chewy Vuiton" of the famous LOUIS VUITTON mark, construing the Trademark Dilution Revision Act of 2006 (TDRA) to hold that parody may be considered in determining whether dilution by blurring has occurred.


What They Were Fighting About: Louis Vuitton Malletier (LVM) brought suit against Haute Diggity Dog (HDD), which manufactures and sells plush dog toys, including one called "Chewy Vuiton." The district court, on cross-motions for summary judgment, ruled in HDD's favor on claims of trademark infringement, trademark dilution, and copyright infringement.

Fourth Circuit Holdings:
The Court agreed with the district court that "Chewy Vuiton" neither infringed LVM's famous mark nor copyright. The Court also rejected LVM's claim for dilution by tarnishment, finding that the possibility that a dog could choke on a "Chewy Vuiton" toy to be insufficient.

The most interesting and important aspect of the Fourth Circuit's ruling, however, is its holding that HDD's use of "Chewy Vuiton" also did not result in dilution by blurring of the famous LOUIS VUITTON mark under the TDRA.

• As the Fourth Circuit observed, the plain language of the TDRA states that "parodying a famous mark is protected by the fair use defense only if the parody is not 'a designation of source for the person's own goods or services.'" (Emphasis in original, citing 15 U.S.C.A. 1125(c)(3)(A)(ii).)
  
• Here, "Chewy Vuiton" is a designation of source and thus does not qualify for protection under the fair use defense. Nonetheless, the Court held that the TDRA "does not require a court to ignore the existence of a parody that is used as a trademark, and it does not preclude a court from considering parody as part of the circumstances to be considered for determining whether the plaintiff has made out a claim for dilution by blurring."
  
• The Court found HDD's use of the mark as a parody to be relevant to the overall question of whether HDD's use is likely to impair the famous LOUIS VUITTON mark's distinctiveness.
  
• Instead of remanding the case to the district court, the Court then applied the TDRA dilution factors to the case to conclude that because HDD's "Chewy Vuiton" mark is a successful parody, it does not blur the distinctiveness of the LOUIS VUITTON mark. As the Court observed, "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."

It will be interesting to see if other circuits agree with the Fourth Circuit's reasoning in future dilution cases.