Neither Blurred Nor Tarnished: How Haute Diggity Dog Won Against Louis Vuitton

*** The writing does not, and is not intended to, constitute legal advice by any means***

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Being a famous mark has its price. People out there will try to use it in various settings. Louis Vuitton is a prime example. Haute Diggity Dog is a Nevada corporation that manufactures and sells pet products, including toys, nationwide. As you would have probably guessed, in 2007, it appropriated the Louis Vuitton monogram mark that enjoys global recognition. The toy in question was conspicuously labelled "Chewy Vuitton" to suggest its parodic nature. Louis Vuitton sued Haute Diggity Dog for copyright infringement and trademark dilution. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). We are now entering a new territory in trademark law: dilution laws. I've never talked about the subject before, and felt necessary to do so. There are two ways of effectively diluting a mark: dilution by blurring and dilution by tarnishment. The two concepts are distinctive, but it's so easy to lose sight of what each actually does in the grand scheme of things. This 2007 case will give a clarifying explanation.

1) Dilution by blurring

Dilution by blurring occurs when the distinctiveness of a famous mark is vitiated by another mark because people make a mistaken association between the two. In his opinion, Judge Niemeyer forcefully notes that the fact that Chewy Vuitton was deemed a successful parody under fair use (See my earlier post that addresses the parody analysis in light of fair use involving Louis Vuitton handbags) in connection with the copyright infringement claim does not impair Louis Vuitton's ability to raise an effective dilution claim. The Trademark Dilution Revision Act enumerates six factors a court may take into consideration holistically to arrive at a finding of dilution. See 15 U.S.C. § 1125(c)(2)(B). The relevant factors are: i) the degree of similarity between the mark and the famous mark, ii) the degree of inherent or acquired distinctiveness of the famous mark, iii) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark, iv) the degree of recognition of the famous mark, v) whether the user of the mark intended to create an association with the famous mark, and vi) any actual association between the mark and the famous mark. 

The judge then explains that parody is relevant in this case to the extent that it gets at the questions of how similar the two marks are and how readily identifiable the famous mark is in the minds of the American public. The judge concludes that the LV mark is so famous that such parody cannot even operate to diminish its distinctiveness as a source identifier. The judge seems to be opining that no consumer in the actual marketplace would be tricked into thinking that a global luxury conglomerate like Louis Vuitton can ever be remotely associated with a small pet company that trades in canine products.

2) Dilution by tarnishment

Dilution by tarnishment takes place when the reputation of a famous mark is harmed by another mark. To prevail on a claim of dilution, Louis Vuitton has to demonstrate that Haute Diggity Dog's use of the LV mark causes detrimental effects to the goodwill of the mark. The attorneys for Louis Vuitton claimed that "a dog could choke on a "Chewy Vuitton" toy" and that is the essence of the repuatational harm that cannot be cured. The judge plainly rejects the claim, stating that that's a pure speculation absent the evidentiary support. He takes note of the fact that the attorneys did not submit records to that effect. The judge seems to express his incredulity at the assertion as if he were thinking, "Are you being serious here?". I share his sentiment. The alleged harm is too far-fetched and lacks specificity, and the attorneys should have prepared more vigorously.

Successful brands sometimes have to pay the price of fame. I believe that the dilution by blurring claim failed largely because the LV monogram attained such a stratospheric status in the marketplace that a parodic use can now sometimes escape liability. Last but not least, it is important to understand that dilution laws apply only to famous marks. It is, in part because, the U.S. trademark law chiefly aims to protect the goodwill of a mark. Louis Vuitton must have expended tremendous corporate resources not only in the U.S. but around the globe to imbue its LV monogram mark with secondary meaning. Louis Vuitton ultimately lost in the case, but I should say it "lost the battle but won the war". The judge amply cautions that things would have come out differently had the parody been so similar to the LV mark that it likely could be interpreted as an actual use of the LV mark itself." So don't be fooled! Parody wins, but only in limited circumstances.