Birleşik Devletler Temyiz Mahkemesi Dördüncü Daire’nin Louis Vuitton Malletier S.A. - Haute Diggity Dog, LLC Kararı

United States Court of Appeals for the Fourth Circuit - 
Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC Judgement

Onur HASBAY

Louis Vuitton; pahalı bavul, çanta ve aksesuarlar üretmektedir. Louis Vuitton, köpekler için çiğneme oyuncakları imal eden Haute Diggity Dog’a, “Chewy Vuiton” adlı küçük el çantaları üretimi nedeniyle dava açmıştır. Vuitton, Lanham Yasası ve Markanın Haksız Kullanımı Tashih Yasası’na aykırılık teşkil eden marka hakkına tecavüz ve markanın haksız kullanımı sebeplerine dayanarak dava açmıştır. Bunun üzerine bölge mahkemesi H.D.D. lehine karar vermiş ve L.V.M. temyiz yoluna gitmiştir. “Chewy Vuiton”, Vuitton markasının ve onun ticari takdim şekline sahip olan başarılı bir taklitti. Oyuncak, açık bir biçimde el çantasının saygısız ve kasıtlı olarak yapılmış bir benzeriydi; ama şüphesiz ki üreticinin markasının imgesi de değildi. Ürünün ticari marka kapsamında taklit olarak değerlendirilmesi için, orjinal görünümde; fakat aslında orjinal olmaması gerekir ki, burada gülünç bir taklit mevcuttur. Markanın hakiki ürünleri ve taklidi olan çiğneme oyuncaklarının birbiriyle karışmayacağı konusunda şüphe yoktur. Vuitton markası güçlü bir markadır, kimse köpek oyuncakları için kullanıldığını düşünmez, bu sebeple Lanham Yasası’na aykırılık bulunmamaktadır. Benzer şekilde Markanın Haksız Kullanımı Tashih Yasası’na göre, gülünç taklit suretiyle adil kullanıma izin verilmiştir; çünkü bu durum ünlü markanın ayırt ediciliğine zarar vermemektedir.

Marka, Hakka Tecavüz, Haksız Kullanım, Lanham Kanunu, Karışıklık, Ayırt Ediciliğin Zayıflatılması, Parodi, İtibarın Zedelenmesi.

Louis Vuitton makes expensive luggage, handbags, and accessories. It sued Haute Diggity Dog for making chew toys for dogs, including small handbags called “Chewy Vuiton.” Vuitton sued for trademark infringement and trademark dilution in violation of the Lanham Act and the Trademark Dilution Revision Act. The district court held for Haute Diggity Dog; Vuitton appealed. Chewy Vuiton was a successful parody of the Vuitton marks and trade dress. The toy was obviously irreverent and an intentional representation of the handbag, but there was no doubt that it was not an image of the mark created by the maker. To be a parody, for trademark purposes, the product must convey that it is the original but also that it is not the original, it is only a parody for amusement. There would be no confusion between genuine products and the chew toys. The Vuitton mark is strong; no one would think it was being used on the dog toys, so it does not violate the Lanham Act. Similarly, under the Trademark Dilution Revision Act, fair use by parody is allowed since it does not impair the distinctiveness of the famous mark.

Trademark, Infringement, Dilution, Lanham Act, Confusion, Blurring, Parody, Tarnishment.

United States Court of Appeals for the Fourth Circuit 507 F.3d 252
(4th Cir. 2007)

NIEMEYER, Circuit Judge:

Louis Vuitton Malletier S.A., a French corporation located in Paris, that manufactures luxury luggage, handbags, and accessories, commenced this action against Haute Diggity Dog, LLC, a Nevada corporation that manufactures and sells pet products nationally, alleging trademark infringement under 15 U.S.C. § 1114(1)(a), trademark dilution under 15 U.S.C. § 1125(c), copyright infringement under 17 U.S.C. § 501, and related statutory and common law violations. Haute Diggity Dog manufactures, among other things, plush toys on which dogs can chew, which, it claims, parody famous trademarks on luxury products, including those of Louis Vuitton Malletier. The particular Haute Diggity Dog chew toys in question here are small imitations of handbags that are labeled “Chewy Vuiton” and that mimic Louis Vuitton Malletier's LOUIS VUITTON handbags.

On cross-motions for summary judgment, the district court concluded that Haute Diggity Dog's “Chewy Vuiton” dog toys were successful parodies of Louis Vuitton Malletier's trademarks, designs, and products, and on that basis, entered judgment in favor of Haute Diggity Dog on all of Louis Vuitton Malletier's claims.

On appeal, we agree with the district court that Haute Diggity Dog's products are not likely to cause confusion with those of Louis Vuitton Malletier and that Louis Vuitton Malletier's copyright was not infringed. On the trademark dilution claim, however, we reject the district court's reasoning but reach the same conclusion through a different analysis. Accordingly, we affirm.

I

Louis Vuitton Malletier S.A. (“LVM”) is a well known manufacturer of luxury luggage, leather goods, handbags, and accessories, which it markets and sells worldwide. In connection with the sale of its products, LVM has adopted trademarks and trade dress that are well recognized and have become famous and distinct. Indeed, in 2006, BusinessWeek ranked LOUIS VUITTON as the 17th “best brand” of all corporations in the world and the first “best brand” for any fashion business.

LVM has registered trademarks for “LOUIS VUITTON,” in connection with luggage and ladies' handbags (the “LOUIS VUITTON mark”); for a stylized monogram of “LV,” in connection with traveling bags and other goods (the “LV mark”); and for a monogram canvas design consisting of a canvas with repetitions of the LV mark along with four- pointed stars, four-pointed stars inset in curved diamonds, and four-pointed flowers inset in circles, in connection with traveling bags and other products (the “Monogram Canvas mark”). In 2002, LVM adopted a brightly-colored version of the Monogram Canvas mark in which the LV mark and the designs were of various colors and the background was white (the “Multicolor design”), created in collaboration with Japanese artist Takashi Murakami. For the Multicolor design, LVM obtained a copyright in 2004. In 2005, LVM adopted another design consisting of a canvas with repetitions of the LV mark and smiling cherries on a brown background (the “Cherry design”).

As LVM points out, the Multicolor design and the Cherry design attracted immediate and extraordinary media attention and publicity in magazines such as Vogue, W, Elle, Harper's Bazaar, Us Weekly, Life and Style, Travel & Leisure, People, In Style, and Jane. The press published photographs showing celebrities carrying these handbags, including Jennifer Lopez, Madonna, Eve, Elizabeth Hurley, Carmen Electra, and Anna Kournikova, among others. When the Multicolor design first appeared in 2003, the magazines typically reported, “The Murakami designs for Louis Vuitton, which were the hit of the summer, came with hefty price tags and a long waiting list.” People Magazine said, “the wait list is in the thousands.” The handbags retailed in the range of $995 for a medium handbag to $4500 for a large travel bag. The medium size handbag that appears to be the model for the “Chewy Vuiton” dog toy retailed for $1190. The Cherry design appeared in 2005, and the handbags including that design were priced similarly-in the range of $995 to $2740. LVM does not currently market products using the Cherry design.

The original LOUIS VUITTON, LV, and Monogram Canvas marks, however, have been used as identifiers of LVM products continuously since 1896.

During the period 2003-2005, LVM spent more than $48 million advertising products using its marks and designs, including more than $4 million for the Multicolor design. It sells its products exclusively in LVM stores and in its own in-store boutiques that are contained within department stores such as Saks Fifth Avenue, Bloomingdale's, Neiman Marcus, and Macy's. LVM also advertises its products on the Internet through the specific websites www.louisvuitton.com and www.eluxury.com.

Although better known for its handbags and luggage, LVM also markets a limited selection of luxury pet accessories-collars, leashes, and dog carriers-which bear the Monogram Canvas mark and the Multicolor design. These items range in price from approximately $200 to $1600. LVM does not make dog toys.

Haute Diggity Dog, LLC, which is a relatively small and relatively new business located in Nevada, manufactures and sells nationally-primarily through pet stores-a line of pet chew toys and beds whose names parody elegant high-end brands of products such as perfume, cars, shoes, sparkling wine, and handbags. These include-in addition to Chewy Vuiton (LOUIS VUITTON)-Chewnel No. 5 (Chanel No. 5), Furcedes (Mercedes), Jimmy Chew (Jimmy Choo), Dog Perignonn (Dom Perignon), Sniffany & Co. (Tiffany & Co.), and Dogior (Dior). The chew toys and pet beds are plush, made of polyester, and have a shape and design that loosely imitate the signature product of the targeted brand. They are mostly distributed and sold through pet stores, although one or two Macy's stores carries Haute Diggity Dog's products. The dog toys are generally sold for less than $20, although larger versions of some of Haute Diggity Dog's plush dog beds sell for more than $100.

Haute Diggity Dog's “Chewy Vuiton” dog toys, in particular, loosely resemble miniature handbags and undisputedly evoke LVM handbags of similar shape, design, and color. In lieu of the LOUIS VUITTON mark, the dog toy uses “Chewy Vuiton”; in lieu of the LV mark, it uses “CV”; and the other symbols and colors employed are imitations, but not exact ones, of those used in the LVM Multicolor and Cherry designs.

[The Court found that the Chewy Vuiton toys were successful parodies that were not likely to confuse consumers].

III

LVM also contends that Haute Diggity Dog's advertising, sale, and distribution of the “Chewy Vuiton” dog toys dilutes its LOUIS VUITTON, LV, and Monogram Canvas marks, which are famous and distinctive, in violation of the Trademark Dilution Revision Act of 2006 (“TDRA”), 15 U.S.C.A. § 1125(c) (West Supp.2007). It argues, “Before the district court's decision, Vuitton's famous marks were unblurred by any third party trademark use.” “Allowing defendants to become the first to use similar marks will obviously blur and dilute the Vuitton Marks.” It also contends that “Chewy Vuiton” dog toys are likely to tarnish LVM's marks because they “pose a choking hazard for some dogs.”

Haute Diggity Dog urges that, in applying the TDRA to the circumstances before us, we reject LVM's suggestion that a parody “automatically” gives rise to “actionable dilution.” Haute Diggity Dog contends that only marks that are “identical or substantially similar” can give rise to actionable dilution, and its “Chewy Vuiton” marks are not identical or sufficiently similar to LVM's marks. It also argues that “[its] spoof, like other obvious parodies,” “‘tends to increase public identification’ of [LVM's] mark with [LVM],” quoting Jordache, 828 F.2d at 1490, rather than impairing its distinctiveness, as the TDRA requires. As for LVM's tarnishment claim, Haute Diggity Dog argues that LVM's position is at best based on speculation and that LVM has made no showing of a likelihood of dilution by tarnishment.

[T]o state a dilution claim under the TDRA, a plaintiff must show: