PUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
LOUIS VUITTON MALLETIER S.A.,
Plaintiff-Appellant,
v.
HAUTE DIGGITY DOG, LLC; VICTORIA
D.N. DAUERNHEIM; WOOFIES, LLC,
d/b/a Woofie’s Pet Boutique, No. 06-2267
Defendant-Appellees.
INTERNATIONAL TRADEMARK
ASSOCIATION,
Amicus Supporting Appellant.
Appeal from the United States District Court
for the Eastern District of Virginia, at Alexandria.
James C. Cacheris, Senior District Judge.
(1:06-cv-00321-JCC)
Argued: September 26, 2007
Decided: November 13, 2007
Before NIEMEYER and TRAXLER, Circuit Judges, and
Samuel G. WILSON, United States District Judge for the
Western District of Virginia, sitting by designation.
Affirmed by published opinion. Judge Niemeyer wrote the opinion,
in which Judge Traxler and Judge Wilson joined.
2 LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG
COUNSEL
ARGUED: David Hal Bernstein, DEBEVOISE & PLIMPTON,
L.L.P., New York, New York, for Amicus Supporting Appellant.
Michael Abbott Grow, ARENT & FOX, P.L.L.C., Washington, D.C.,
for Appellant. James D. Petruzzi, MASON & PETRUZZI, Houston,
Texas, for Appellees. ON BRIEF: Savalle C. Sims, Ross Panko,
ARENT & FOX, P.L.L.C., Washington, D.C., for Appellant. W.
Michael Holm, WOMBLE, CARLYLE, SANDRIDGE & RICE,
Tyson’s Corner, Virginia, for Appellees. Theodore H. Davis, Jr., Scot
A. Duvall, Anne Gundelfinger, Steven Pokotilow, INTERNA-
TIONAL TRADEMARK ASSOCIATION, New York, New York;
Michael Potenza, Timothy T. Howard, DEBEVOISE & PLIMPTON,
L.L.P., New York, New York, for Amicus Supporting Appellant.
OPINION
NIEMEYER, Circuit Judge:
Louis Vuitton Malletier S.A., a French corporation located in Paris,
that manufactures luxury luggage, handbags, and accessories, com-
menced this action against Haute Diggity Dog, LLC, a Nevada corpo-
ration that manufactures and sells pet products nationally, alleging
trademark infringement under 15 U.S.C. § 1114(1)(a), trademark dilu-
tion 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 con-
cluded that Haute Diggity Dog’s "Chewy Vuiton" dog toys were suc-
cessful parodies of Louis Vuitton Malletier’s trademarks, designs, and
products, and on that basis, entered judgment in favor of Haute Dig-
gity Dog on all of Louis Vuitton Malletier’s claims.
LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG 3
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 dif-
ferent analysis. Accordingly, we affirm.
I
Louis Vuitton Malletier S.A. ("LVM") is a well known manufac-
turer 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 con-
nection with luggage and ladies’ handbags (the "LOUIS VUITTON
mark"); for a stylized monogram of "LV," in connection with travel-
ing bags and other goods (the "LV mark"); and for a monogram can-
vas design consisting of a canvas with repetitions of the LV mark
along with four-pointed stars, four-pointed stars inset in curved dia-
monds, 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"), cre-
ated 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,
4 LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG
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 sum-
mer, came with hefty price tags and a long waiting list." People Mag-
azine 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 con-
tinuously 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 approxi-
mately $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 per-
fume, 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
LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG 5
Dogior (Dior). The chew toys and pet beds are plush, made of polyes-
ter, 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.
In 2002, LVM commenced this action, naming as defendants Haute
Diggity Dog; Victoria D.N. Dauernheim, the principal owner of
Haute Diggity Dog; and Woofies, LLC, a retailer of Haute Diggity
Dog’s products, located in Asburn, Virginia, for trademark, trade
dress, and copyright infringement. Its complaint includes counts for
trademark counterfeiting, under 15 U.S.C. § 1114(1)(a); trademark
infringement, under 15 U.S.C. § 1114(1)(a); trade dress infringement,
under 15 U.S.C. § 1125(a)(1); unfair competition, under 15 U.S.C.
§ 1125(a)(1); trademark dilution, under 15 U.S.C. § 1125(c); trade-
mark infringement, under Virginia common law; trade dress infringe-
ment, under Virginia common law; unfair competition, under Virginia
common law; copyright infringement of the Multicolor design, under
17 U.S.C. § 501; and violation of the Virginia Consumer Protection
Act, under Virginia Code § 59.1-200. On cross-motions for summary
judgment, the district court granted Haute Diggity Dog’s motion and
denied LVM’s motion, entering judgment in favor of Haute Diggity
Dog on all of the claims. It rested its analysis on each count princi-
pally on the conclusion that Haute Diggity Dog’s products amounted
to a successful parody of LVM’s marks, trade dress, and copyright.
See Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 464 F.
Supp. 2d 495 (E.D. Va. 2006).
LVM appealed and now challenges, as a matter of law, virtually
every ruling made by the district court.
6 LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG
II
LVM contends first that Haute Diggity Dog’s marketing and sale
of its "Chewy Vuiton" dog toys infringe its trademarks because the
advertising and sale of the "Chewy Vuiton" dog toys is likely to cause
confusion. See 15 U.S.C. § 1114(1)(a). LVM argues:
The defendants in this case are using almost an exact imita-
tion of the house mark VUITTON (merely omitting a sec-
ond "T"), and they painstakingly copied Vuitton’s
Monogram design mark, right down to the exact arrange-
ment and sequence of geometric symbols. They also used
the same design marks, trade dress, and color combinations
embodied in Vuitton’s Monogram Multicolor and Mono-
gram Cerises [Cherry] handbag collections. Moreover, HDD
did not add any language to distinguish its products from
Vuitton’s, and its products are not "widely recognized."1
Haute Diggity Dog contends that there is no evidence of confusion,
nor could a reasonable factfinder conclude that there is a likelihood
of confusion, because it successfully markets its products as parodies
of famous marks such as those of LVM. It asserts that "precisely
because of the [famous] mark’s fame and popularity . . . confusion is
avoided, and it is this lack of confusion that a parodist depends upon
to achieve the parody." Thus, responding to LVM’s claims of trade-
mark infringement, Haute Diggity Dog argues:
The marks are undeniably similar in certain respects. There
are visual and phonetic similarities. [Haute Diggity Dog]
1
We take this argument to be that Haute Diggity Dog is copying too
closely the marks and trade dress of LVM. But we reject the statement
that LVM has a trademark consisting of the one word VUITTON. At oral
argument, counsel for LVM conceded that the trademark is "LOUIS
VUITTON," and it is always used in that manner rather than simply as
"VUITTON." It appears that LVM has employed this technique to pro-
vide a more narrow, but irrelevant, comparison between its VUITTON
and Haute Diggity Dog’s "Vuiton." In resolving this case, however, we
take LVM’s arguments to compare "LOUIS VUITTON" with Haute Dig-
gity Dog’s "Chewy Vuiton."
LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG 7
admits that the product name and design mimics LVM’s and
is based on the LVM marks. It is necessary for the pet prod-
ucts to conjure up the original designer mark for there to be
a parody at all. However, a parody also relies on "equally
obvious dissimilarit[ies] between the marks" to produce its
desired effect.
Concluding that Haute Diggity Dog did not create any likelihood
of confusion as a matter of law, the district court granted summary
judgment to Haute Diggity Dog. Louis Vuitton Malletier, 464 F.
Supp. 2d at 503, 508. We review its order de novo. See CareFirst of
Md., Inc. v. First Care, P.C., 434 F.3d 263, 267 (4th Cir. 2006).
To prove trademark infringement, LVM must show (1) that it owns
a valid and protectable mark; (2) that Haute Diggity Dog uses a "re-
production, counterfeit, copy, or colorable imitation" of that mark in
commerce and without LVM’s consent; and (3) that Haute Diggity
Dog’s use is likely to cause confusion. 15 U.S.C. § 1114(1)(a); Care-
First, 434 F.3d at 267. The validity and protectability of LVM’s
marks are not at issue in this case, nor is the fact that Haute Diggity
Dog uses a colorable imitation of LVM’s mark. Therefore, we give
the first two elements no further attention. To determine whether the
"Chewy Vuiton" product line creates a likelihood of confusion, we
have identified several nonexclusive factors to consider: (1) the
strength or distinctiveness of the plaintiff’s mark; (2) the similarity of
the two marks; (3) the similarity of the goods or services the marks
identify; (4) the similarity of the facilities the two parties use in their
businesses; (5) the similarity of the advertising used by the two par-
ties; (6) the defendant’s intent; and (7) actual confusion. See Pizzeria
Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984). These
Pizzeria Uno factors are not always weighted equally, and not all fac-
tors are relevant in every case. See CareFirst, 434 F.3d at 268.
Because Haute Diggity Dog’s arguments with respect to the Pizze-
ria Uno factors depend to a great extent on whether its products and
marks are successful parodies, we consider first whether Haute Dig-
gity Dog’s products, marks, and trade dress are indeed successful par-
odies of LVM’s marks and trade dress.
For trademark purposes, "[a] ‘parody’ is defined as a simple form
of entertainment conveyed by juxtaposing the irreverent representa-
8 LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG
tion of the trademark with the idealized image created by the mark’s
owner." People for the Ethical Treatment of Animals v. Doughney
("PETA"), 263 F.3d 359, 366 (4th Cir. 2001) (internal quotation
marks omitted). "A parody must convey two simultaneous — and
contradictory — messages: that it is the original, but also that it is not
the original and is instead a parody." Id. (internal quotation marks and
citation omitted). This second message must not only differentiate the
alleged parody from the original but must also communicate some
articulable element of satire, ridicule, joking, or amusement. Thus,
"[a] parody relies upon a difference from the original mark, presum-
ably a humorous difference, in order to produce its desired effect."
Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1486
(10th Cir. 1987) (finding the use of "Lardashe" jeans for larger
women to be a successful and permissible parody of "Jordache"
jeans).
When applying the PETA criteria to the facts of this case, we agree
with the district court that the "Chewy Vuiton" dog toys are success-
ful parodies of LVM handbags and the LVM marks and trade dress
used in connection with the marketing and sale of those handbags.
First, the pet chew toy is obviously an irreverent, and indeed inten-
tional, representation of an LVM handbag, albeit much smaller and
coarser. The dog toy is shaped roughly like a handbag; its name
"Chewy Vuiton" sounds like and rhymes with LOUIS VUITTON; its
monogram CV mimics LVM’s LV mark; the repetitious design
clearly imitates the design on the LVM handbag; and the coloring is
similar. In short, the dog toy is a small, plush imitation of an LVM
handbag carried by women, which invokes the marks and design of
the handbag, albeit irreverently and incompletely. No one can doubt
that LVM handbags are the target of the imitation by Haute Diggity
Dog’s "Chewy Vuiton" dog toys.
At the same time, no one can doubt also that the "Chewy Vuiton"
dog toy is not the "idealized image" of the mark created by LVM. The
differences are immediate, beginning with the fact that the "Chewy
Vuiton" product is a dog toy, not an expensive, luxury LOUIS VUIT-
TON handbag. The toy is smaller, it is plush, and virtually all of its
designs differ. Thus, "Chewy Vuiton" is not LOUIS VUITTON
("Chewy" is not "LOUIS" and "Vuiton" is not "VUITTON," with its
two Ts); CV is not LV; the designs on the dog toy are simplified and
LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG 9
crude, not detailed and distinguished. The toys are inexpensive; the
handbags are expensive and marketed to be expensive. And, of
course, as a dog toy, one must buy it with pet supplies and cannot buy
it at an exclusive LVM store or boutique within a department store.
In short, the Haute Diggity Dog "Chewy Vuiton" dog toy undoubt-
edly and deliberately conjures up the famous LVM marks and trade
dress, but at the same time, it communicates that it is not the LVM
product.
Finally, the juxtaposition of the similar and dissimilar — the irrev-
erent representation and the idealized image of an LVM handbag —
immediately conveys a joking and amusing parody. The furry little
"Chewy Vuiton" imitation, as something to be chewed by a dog,
pokes fun at the elegance and expensiveness of a LOUIS VUITTON
handbag, which must not be chewed by a dog. The LVM handbag is
provided for the most elegant and well-to-do celebrity, to proudly dis-
play to the public and the press, whereas the imitation "Chewy Vui-
ton" "handbag" is designed to mock the celebrity and be used by a
dog. The dog toy irreverently presents haute couture as an object for
casual canine destruction. The satire is unmistakable. The dog toy is
a comment on the rich and famous, on the LOUIS VUITTON name
and related marks, and on conspicuous consumption in general. This
parody is enhanced by the fact that "Chewy Vuiton" dog toys are sold
with similar parodies of other famous and expensive brands —
"Chewnel No. 5" targeting "Chanel No. 5"; "Dog Perignonn" target-
ing "Dom Perignon"; and "Sniffany & Co." targeting "Tiffany & Co."
We conclude that the PETA criteria are amply satisfied in this case
and that the "Chewy Vuiton" dog toys convey "just enough of the
original design to allow the consumer to appreciate the point of par-
ody," but stop well short of appropriating the entire marks that LVM
claims. PETA, 263 F.3d at 366 (quoting Jordache, 828 F.2d at 1486).
Finding that Haute Diggity Dog’s parody is successful, however,
does not end the inquiry into whether Haute Diggity Dog’s "Chewy
Vuiton" products create a likelihood of confusion. See 6 J. Thomas
McCarthy, Trademarks and Unfair Competition § 31:153, at 262 (4th
ed. 2007) ("There are confusing parodies and non-confusing parodies.
All they have in common is an attempt at humor through the use of
someone else’s trademark"). The finding of a successful parody only
10 LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG
influences the way in which the Pizzeria Uno factors are applied. See,
e.g., Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316, 321
(4th Cir. 1992) (observing that parody alters the likelihood-of-
confusion analysis). Indeed, it becomes apparent that an effective par-
ody will actually diminish the likelihood of confusion, while an inef-
fective parody does not. We now turn to the Pizzeria Uno factors.
A
As to the first Pizzeria Uno factor, the parties agree that LVM’s
marks are strong and widely recognized. They do not agree, however,
as to the consequences of this fact. LVM maintains that a strong,
famous mark is entitled, as a matter of law, to broad protection. While
it is true that finding a mark to be strong and famous usually favors
the plaintiff in a trademark infringement case, the opposite may be
true when a legitimate claim of parody is involved. As the district
court observed, "In cases of parody, a strong mark’s fame and popu-
larity is precisely the mechanism by which likelihood of confusion is
avoided." Louis Vuitton Malletier, 464 F. Supp. 2d at 499 (citing Hor-
mel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 503-04 (2d
Cir. 1996); Schieffelin & Co. v. Jack Co. of Boca, Inc., 850 F. Supp.
232, 248 (S.D.N.Y. 1994)). "An intent to parody is not an intent to
confuse the public." Jordache, 828 F.2d at 1486.
We agree with the district court. It is a matter of common sense
that the strength of a famous mark allows consumers immediately to
perceive the target of the parody, while simultaneously allowing them
to recognize the changes to the mark that make the parody funny or
biting. See Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221
F. Supp. 2d 410, 416 (S.D.N.Y. 2002) (noting that the strength of the
"TOMMY HILFIGER" fashion mark did not favor the mark’s owner
in an infringement case against "TIMMY HOLEDIGGER" novelty
pet perfume). In this case, precisely because LOUIS VUITTON is so
strong a mark and so well recognized as a luxury handbag brand from
LVM, consumers readily recognize that when they see a "Chewy Vui-
ton" pet toy, they see a parody. Thus, the strength of LVM’s marks
in this case does not help LVM establish a likelihood of confusion.
B
With respect to the second Pizzeria Uno factor, the similarities
between the marks, the usage by Haute Diggity Dog again converts
LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG 11
what might be a problem for Haute Diggity Dog into a disfavored
conclusion for LVM.
Haute Diggity Dog concedes that its marks are and were designed
to be somewhat similar to LVM’s marks. But that is the essence of
a parody — the invocation of a famous mark in the consumer’s mind,
so long as the distinction between the marks is also readily recog-
nized. While a trademark parody necessarily copies enough of the
original design to bring it to mind as a target, a successful parody also
distinguishes itself and, because of the implicit message communi-
cated by the parody, allows the consumer to appreciate it. See PETA,
263 F.3d at 366 (citing Jordache, 828 F.2d at 1486); Anheuser-Busch,
962 F.2d at 321.
In concluding that Haute Diggity Dog has a successful parody, we
have impliedly concluded that Haute Diggity Dog appropriately mim-
icked a part of the LVM marks, but at the same time sufficiently dis-
tinguished its own product to communicate the satire. The differences
are sufficiently obvious and the parody sufficiently blatant that a con-
sumer encountering a "Chewy Vuiton" dog toy would not mistake its
source or sponsorship on the basis of mark similarity.
This conclusion is reinforced when we consider how the parties
actually use their marks in the marketplace. See CareFirst, 434 F.3d
at 267 (citing What-A-Burger of Va., Inc. v. Whataburger, Inc., 357
F.3d 441, 450 (4th Cir. 2004)); Lamparello v. Falwell, 420 F.3d 309,
316 (4th Cir. 2005); Hormel Foods, 73 F.3d at 503. The record amply
supports Haute Diggity Dog’s contention that its "Chewy Vuiton"
toys for dogs are generally sold alongside other pet products, as well
as toys that parody other luxury brands, whereas LVM markets its
handbags as a top-end luxury item to be purchased only in its own
stores or in its own boutiques within department stores. These market-
ing channels further emphasize that "Chewy Vuiton" dog toys are not,
in fact, LOUIS VUITTON products.
C
Nor does LVM find support from the third Pizzeria Uno factor, the
similarity of the products themselves. It is obvious that a "Chewy
Vuiton" plush imitation handbag, which does not open and is manu-
12 LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG
factured as a dog toy, is not a LOUIS VUITTON handbag sold by
LVM. Even LVM’s most proximate products — dog collars, leashes,
and pet carriers — are fashion accessories, not dog toys. As Haute
Diggity Dog points out, LVM does not make pet chew toys and likely
does not intend to do so in the future. Even if LVM were to make dog
toys in the future, the fact remains that the products at issue are not
similar in any relevant respect, and this factor does not favor LVM.
D
The fourth and fifth Pizzeria Uno factors, relating to the similarity
of facilities and advertising channels, have already been mentioned.
LVM products are sold exclusively through its own stores or its own
boutiques within department stores. It also sells its products on the
Internet through an LVM-authorized website. In contrast, "Chewy
Vuiton" products are sold primarily through traditional and Internet
pet stores, although they might also be sold in some department
stores. The record demonstrates that both LVM handbags and
"Chewy Vuiton" dog toys are sold at a Macy’s department store in
New York. As a general matter, however, there is little overlap in the
individual retail stores selling the brands.
Likewise with respect to advertising, there is little or no overlap.
LVM markets LOUIS VUITTON handbags through high-end fashion
magazines, while "Chewy Vuiton" products are advertised primarily
through pet-supply channels.
The overlap in facilities and advertising demonstrated by the record
is so minimal as to be practically nonexistent. "Chewy Vuiton" toys
and LOUIS VUITTON products are neither sold nor advertised in the
same way, and the de minimis overlap lends insignificant support to
LVM on this factor.
E
The sixth factor, relating to Haute Diggity Dog’s intent, again is
neutralized by the fact that Haute Diggity Dog markets a parody of
LVM products. As other courts have recognized, "An intent to parody
is not an intent to confuse the public." Jordache, 828 F.2d at 1486.
LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG 13
Despite Haute Diggity Dog’s obvious intent to profit from its use of
parodies, this action does not amount to a bad faith intent to create
consumer confusion. To the contrary, the intent is to do just the oppo-
site — to evoke a humorous, satirical association that distinguishes
the products. This factor does not favor LVM.
F
On the actual confusion factor, it is well established that no actual
confusion is required to prove a case of trademark infringement,
although the presence of actual confusion can be persuasive evidence
relating to a likelihood of confusion. See CareFirst, 434 F.3d at 268.
While LVM conceded in the district court that there was no evi-
dence of actual confusion, on appeal it points to incidents where
retailers misspelled "Chewy Vuiton" on invoices or order forms,
using two Ts instead of one. Many of these invoices also reflect
simultaneous orders for multiple types of Haute Diggity Dog parody
products, which belies the notion that any actual confusion existed as
to the source of "Chewy Vuiton" plush toys. The misspellings pointed
out by LVM are far more likely in this context to indicate confusion
over how to spell the product name than any confusion over the
source or sponsorship of the "Chewy Vuiton" dog toys. We conclude
that this factor favors Haute Diggity Dog.
In sum, the likelihood-of-confusion factors substantially favor
Haute Diggity Dog. But consideration of these factors is only a proxy
for the ultimate statutory test of whether Haute Diggity Dog’s market-
ing, sale, and distribution of "Chewy Vuiton" dog toys is likely to
cause confusion. Recognizing that "Chewy Vuiton" is an obvious par-
ody and applying the Pizzeria Uno factors, we conclude that LVM
has failed to demonstrate any likelihood of confusion. Accordingly,
we affirm the district court’s grant of summary judgment in favor of
Haute Diggity Dog on the issue of trademark infringement.
III
LVM also contends that Haute Diggity Dog’s advertising, sale, and
distribution of the "Chewy Vuiton" dog toys dilutes its LOUIS VUIT-
14 LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG
TON, LV, and Monogram Canvas marks, which are famous and dis-
tinctive, in violation of the Trademark Dilution Revision Act of 2006
("TDRA"), 15 U.S.C.A. § 1125(c) (West Supp. 2007). It argues, "Be-
fore 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 haz-
ard for some dogs."
Haute Diggity Dog urges that, in applying the TDRA to the cir-
cumstances before us, we reject LVM’s suggestion that a parody "au-
tomatically" 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 pub-
lic 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.
Claims for trademark dilution are authorized by the TDRA, a rela-
tively recent enactment,2 which provides in relevant part:
Subject to the principles of equity, the owner of a famous
mark . . . shall be entitled to an injunction against another
2
The TDRA, Pub. L. No. 109-312, 120 Stat. 1730 (2006), amended the
Federal Trademark Dilution Act of 1995, Pub. L. No. 104-98, 109 Stat.
985 (1996), which added a "dilution" cause of action to § 43 of the Lan-
ham Act. When the Supreme Court held that the Federal Trademark
Dilution Act required proof of actual dilution and actual economic harm,
see Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 432-33 (2003);
see also Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah
Div. of Travel Dev., 170 F.3d 449, 461 (4th Cir. 1999), Congress
amended the Act principally to overrule Moseley and to require that only
a likelihood of dilution need be proved. See 15 U.S.C.A. § 1125(c)(1)
(West Supp. 2007).
LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG 15
person who . . . commences use of a mark or trade name in
commerce that is likely to cause dilution by blurring or dilu-
tion by tarnishment of the famous mark, regardless of the
presence or absence of actual or likely confusion, of compe-
tition, or of actual economic injury.
15 U.S.C.A. § 1125(c)(1) (emphasis added). A mark is "famous"
when it is "widely recognized by the general consuming public of the
United States as a designation of source of the goods or services of
the mark’s owner." Id. § 1125(c)(2)(A). Creating causes of action for
only dilution by blurring and dilution by tarnishment, the TDRA
defines "dilution by blurring" as the "association arising from the sim-
ilarity between a mark or trade name and a famous mark that impairs
the distinctiveness of the famous mark." Id. § 1125(c)(2)(B). It
defines "dilution by tarnishment" as the "association arising from the
similarity between a mark or trade name and a famous mark that
harms the reputation of the famous mark." Id. § 1125(c)(2)(C).
Thus, to state a dilution claim under the TDRA, a plaintiff must
show:
(1) that the plaintiff owns a famous mark that is distinc-
tive;
(2) that the defendant has commenced using a mark in
commerce that allegedly is diluting the famous mark;
(3) that a similarity between the defendant’s mark and the
famous mark gives rise to an association between the
marks; and
(4) that the association is likely to impair the distinctive-
ness of the famous mark or likely to harm the reputa-
tion of the famous mark.
In the context of blurring, distinctiveness refers to the ability of the
famous mark uniquely to identify a single source and thus maintain
its selling power. See N.Y. Stock Exch. v. N.Y., N.Y. Hotel LLC, 293
F.3d 550, 558 (2d Cir. 2002) (observing that blurring occurs where
16 LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG
the defendant’s use creates "the possibility that the [famous] mark
will lose its ability to serve as a unique identifier of the plaintiff’s
product") (quoting Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 43
(2d Cir. 1994)); Playboy Entm’t, Inc. v. Welles, 279 F.3d 796, 805
(9th Cir. 2002) (same). In proving a dilution claim under the TDRA,
the plaintiff need not show actual or likely confusion, the presence of
competition, or actual economic injury. See 15 U.S.C.A. § 1125(c)(1).
The TDRA creates three defenses based on the defendant’s (1) "fair
use" (with exceptions); (2) "news reporting and news commentary";
and (3) "noncommercial use." Id. § 1125(c)(3).
A
We address first LVM’s claim for dilution by blurring.
The first three elements of a trademark dilution claim are not at
issue in this case. LVM owns famous marks that are distinctive;
Haute Diggity Dog has commenced using "Chewy Vuiton," "CV,"
and designs and colors that are allegedly diluting LVM’s marks; and
the similarity between Haute Diggity Dog’s marks and LVM’s marks
gives rise to an association between the marks, albeit a parody. The
issue for resolution is whether the association between Haute Diggity
Dog’s marks and LVM’s marks is likely to impair the distinctiveness
of LVM’s famous marks.
In deciding this issue, the district court correctly outlined the six
factors to be considered in determining whether dilution by blurring
has been shown. See 15 U.S.C.A. § 1125(c)(2)(B). But in evaluating
the facts of the case, the court did not directly apply those factors it
enumerated. It held simply:
[The famous mark’s] strength is not likely to be blurred by
a parody dog toy product. Instead of blurring Plaintiff’s
mark, the success of the parodic use depends upon the con-
tinued association with LOUIS VUITTON.
Louis Vuitton Malletier, 464 F. Supp. 2d at 505. The amicus support-
ing LVM’s position in this case contends that the district court, by not
LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG 17
applying the statutory factors, misapplied the TDRA to conclude that
simply because Haute Diggity Dog’s product was a parody meant that
"there can be no association with the famous mark as a matter of
law." Moreover, the amicus points out correctly that to rule in favor
of Haute Diggity Dog, the district court was required to find that the
"association" did not impair the distinctiveness of LVM’s famous
mark.
LVM goes further in its own brief, however, and contends:
When a defendant uses an imitation of a famous mark in
connection with related goods, a claim of parody cannot pre-
clude liability for dilution.
* * *
The district court’s opinion utterly ignores the substantial
goodwill VUITTON has established in its famous marks
through more than a century of exclusive use. Disregarding
the clear Congressional mandate to protect such famous
marks against dilution, the district court has granted [Haute
Diggity Dog] permission to become the first company other
than VUITTON to use imitations of the famous VUITTON
Marks.
In short, LVM suggests that any use by a third person of an imitation
of its famous marks dilutes the famous marks as a matter of law. This
contention misconstrues the TDRA.
The TDRA prohibits a person from using a junior mark that is
likely to dilute (by blurring) the famous mark, and blurring is defined
to be an impairment to the famous mark’s distinctiveness. "Distinc-
tiveness" in turn refers to the public’s recognition that the famous
mark identifies a single source of the product using the famous mark.
To determine whether a junior mark is likely to dilute a famous
mark through blurring, the TDRA directs the court to consider all fac-
tors relevant to the issue, including six factors that are enumerated in
the statute:
18 LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG
(i) The degree of similarity between the mark or trade
name 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 or trade name intended
to create an association with the famous mark.
(vi) Any actual association between the mark or trade
name and the famous mark.
15 U.S.C.A. § 1125(c)(2)(B). Not every factor will be relevant in
every case, and not every blurring claim will require extensive discus-
sion of the factors. But a trial court must offer a sufficient indication
of which factors it has found persuasive and explain why they are per-
suasive so that the court’s decision can be reviewed. The district court
did not do this adequately in this case. Nonetheless, after we apply the
factors as a matter of law, we reach the same conclusion reached by
the district court.
We begin by noting that parody is not automatically a complete
defense to a claim of dilution by blurring where the defendant uses
the parody as its own designation of source, i.e., as a trademark.
Although the TDRA does provide that fair use is a complete defense
and allows that a parody can be considered fair use, it does not extend
the fair use defense to parodies used as a trademark. As the statute
provides:
The following shall not be actionable as dilution by blurring
or dilution by tarnishment under this subsection:
(A) Any fair use . . . other than as a designation
of source for the person’s own goods or services,
LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG 19
including use in connection with . . . parodying
....
15 U.S.C.A. § 1125(c)(3)(A)(ii) (emphasis added). Under the statute’s
plain language, parodying a famous mark is protected by the fair use
defense only if the parody is not "a designation of source for the per-
son’s own goods or services."
The TDRA, however, does not require a court to ignore the exis-
tence 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. Indeed, the statute permits a court to consider
"all relevant factors," including the six factors supplied in
§ 1125(c)(2)(B).
Thus, it would appear that a defendant’s use of a mark as a parody
is relevant to the overall question of whether the defendant’s use is
likely to impair the famous mark’s distinctiveness. Moreover, the fact
that the defendant uses its marks as a parody is specifically relevant
to several of the listed factors. For example, factor (v) (whether the
defendant intended to create an association with the famous mark)
and factor (vi) (whether there exists an actual association between the
defendant’s mark and the famous mark) directly invite inquiries into
the defendant’s intent in using the parody, the defendant’s actual use
of the parody, and the effect that its use has on the famous mark.
While a parody intentionally creates an association with the famous
mark in order to be a parody, it also intentionally communicates, if
it is successful, that it is not the famous mark, but rather a satire of
the famous mark. See PETA, 263 F.3d at 366. That the defendant is
using its mark as a parody is therefore relevant in the consideration
of these statutory factors.
Similarly, factors (i), (ii), and (iv) — the degree of similarity
between the two marks, the degree of distinctiveness of the famous
mark, and its recognizability — are directly implicated by consider-
ation of the fact that the defendant’s mark is a successful parody.
Indeed, by making the famous mark an object of the parody, a suc-
cessful parody might actually enhance the famous mark’s distinctive-
ness by making it an icon. The brunt of the joke becomes yet more
20 LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG
famous. See Hormel Foods, 73 F.3d at 506 (observing that a success-
ful parody "tends to increase public identification" of the famous
mark with its source); see also Yankee Publ’g Inc. v. News Am.
Publ’g Inc., 809 F. Supp. 267, 272-82 (S.D.N.Y. 1992) (suggesting
that a sufficiently obvious parody is unlikely to blur the targeted
famous mark).
In sum, while a defendant’s use of a parody as a mark does not
support a "fair use" defense, it may be considered in determining
whether the plaintiff-owner of a famous mark has proved its claim
that the defendant’s use of a parody mark is likely to impair the dis-
tinctiveness of the famous mark.
In the case before us, when considering factors (ii), (iii), and (iv),
it is readily apparent, indeed conceded by Haute Diggity Dog, that
LVM’s marks are distinctive, famous, and strong. The LOUIS VUIT-
TON mark is well known and is commonly identified as a brand of
the great Parisian fashion house, Louis Vuitton Malletier. So too are
its other marks and designs, which are invariably used with the
LOUIS VUITTON mark. It may not be too strong to refer to these
famous marks as icons of high fashion.
While the establishment of these facts satisfies essential elements
of LVM’s dilution claim, see 15 U.S.C.A. § 1125(c)(1), the facts
impose on LVM an increased burden to demonstrate that the distinc-
tiveness of its famous marks is likely to be impaired by a successful
parody. Even as Haute Diggity Dog’s parody mimics the famous
mark, it communicates simultaneously that it is not the famous mark,
but is only satirizing it. See PETA, 263 F.3d at 366. And because the
famous mark is particularly strong and distinctive, it becomes more
likely that a parody will not impair the distinctiveness of the mark. In
short, as Haute Diggity Dog’s "Chewy Vuiton" marks are a successful
parody, we conclude that they will not blur the distinctiveness of the
famous mark as a unique identifier of its source.
It is important to note, however, that this might not be true if the
parody is so similar to the famous mark that it likely could be con-
strued as actual use of the famous mark itself. Factor (i) directs an
inquiry into the "degree of similarity between the junior mark and the
famous mark. If Haute Diggity Dog used the actual marks of LVM
LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG 21
(as a parody or otherwise), it could dilute LVM’s marks by blurring,
regardless of whether Haute Diggity Dog’s use was confusingly simi-
lar, whether it was in competition with LVM, or whether LVM sus-
tained actual injury. See 15 U.S.C.A. § 1125(c)(1). Thus, "the use of
DUPONT shoes, BUICK aspirin, and KODAK pianos would be
actionable" under the TDRA because the unauthorized use of the
famous marks themselves on unrelated goods might diminish the
capacity of these trademarks to distinctively identify a single source.
Moseley, 537 U.S. at 431 (quoting H.R. Rep. No. 104-374, at 3
(1995), as reprinted in 1995 U.S.C.C.A.N. 1029, 1030). This is true
even though a consumer would be unlikely to confuse the manufac-
turer of KODAK film with the hypothetical producer of KODAK
pianos.
But in this case, Haute Diggity Dog mimicked the famous marks;
it did not come so close to them as to destroy the success of its parody
and, more importantly, to diminish the LVM marks’ capacity to iden-
tify a single source. Haute Diggity Dog designed a pet chew toy to
imitate and suggest, but not use, the marks of a high-fashion LOUIS
VUITTON handbag. It used "Chewy Vuiton" to mimic "LOUIS
VUITTON"; it used "CV" to mimic "LV"; and it adopted imperfectly
the items of LVM’s designs. We conclude that these uses by Haute
Diggity Dog were not so similar as to be likely to impair the distinc-
tiveness of LVM’s famous marks.
In a similar vein, when considering factors (v) and (vi), it becomes
apparent that Haute Diggity Dog intentionally associated its marks,
but only partially and certainly imperfectly, so as to convey the simul-
taneous message that it was not in fact a source of LVM products.
Rather, as a parody, it separated itself from the LVM marks in order
to make fun of them.
In sum, when considering the relevant factors to determine whether
blurring is likely to occur in this case, we readily come to the conclu-
sion, as did the district court, that LVM has failed to make out a case
of trademark dilution by blurring by failing to establish that the dis-
tinctiveness of its marks was likely to be impaired by Haute Diggity
Dog’s marketing and sale of its "Chewy Vuiton" products.
22 LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG
B
LVM’s claim for dilution by tarnishment does not require an
extended discussion. To establish its claim for dilution by tarnish-
ment, LVM must show, in lieu of blurring, that Haute Diggity Dog’s
use of the "Chewy Vuiton" mark on dog toys harms the reputation of
the LOUIS VUITTON mark and LVM’s other marks. LVM argues
that the possibility that a dog could choke on a "Chewy Vuiton" toy
causes this harm. LVM has, however, provided no record support for
its assertion. It relies only on speculation about whether a dog could
choke on the chew toys and a logical concession that a $10 dog toy
made in China was of "inferior quality" to the $1190 LOUIS VUIT-
TON handbag. The speculation begins with LVM’s assertion in its
brief that "defendant Woofie’s admitted that ‘Chewy Vuiton’ prod-
ucts pose a choking hazard for some dogs. Having prejudged the
defendant’s mark to be a parody, the district court made light of this
admission in its opinion, and utterly failed to give it the weight it
deserved," citing to a page in the district court’s opinion where the
court states:
At oral argument, plaintiff provided only a flimsy theory
that a pet may some day choke on a Chewy Vuiton squeak
toy and incite the wrath of a confused consumer against
LOUIS VUITTON.
Louis Vuitton Malletier, 464 F. Supp. 2d at 505. The court was refer-
ring to counsel’s statement during oral argument that the owner of
Woofie’s stated that "she would not sell this product to certain types
of dogs because there is a danger they would tear it open and choke
on it." There is no record support, however, that any dog has choked
on a pet chew toy, such as a "Chewy Vuiton" toy, or that there is any
basis from which to conclude that a dog would likely choke on such
a toy.
We agree with the district court that LVM failed to demonstrate a
claim for dilution by tarnishment. See Hormel Foods, 73 F.3d at 507.
IV
LVM raises three additional claims premised on the same basic
facts. First, it argues that the district court improperly rejected its
LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG 23
counterfeiting claim under 15 U.S.C. § 1114(1)(a). Section 1127 of
Title 15 defines a "counterfeit" mark as "a spurious mark which is
identical with, or substantially indistinguishable from" the plaintiff’s
mark. The district court found, and we agree, that "Chewy Vuiton"
and the "CV" monogram design are not "substantially indistinguish-
able" from the LOUIS VUITTON and LV marks and that the design
and the coloring patterns are different. See Louis Vuitton Malletier,
464 F. Supp. 2d at 506. In selling "Chewy Vuiton" dog toys, Haute
Diggity Dog is not selling knock-off LOUIS VUITTON handbags
with a counterfeit LV mark, and no reasonable trier of fact could so
conclude.
Second, LVM argues that the district court erred in failing to
address LVM’s trade dress claims. Although the district court did not
explicitly discuss the trade dress issue, we find that this reflects econ-
omy rather than error. LVM’s trade dress claims under § 43(a) of the
Lanham Act, 15 U.S.C. § 1125(a)(1), and under Virginia common
law are based on essentially the same facts as its trademark infringe-
ment claims. Haute Diggity Dog does not challenge LVM’s claim that
its trade dress is protectable. The only question before the court was
whether confusion was likely. But the same Pizzeria Uno likelihood-
of-confusion factors used for trademark infringement claims are
applied to trade dress claims, see Tools USA & Equip. Co. v. Champ
Frame Straightening Equip., 87 F.3d 654, 661 (4th Cir. 1996), and
the two issues rise or fall together. Consequently, our conclusion
affirming the district court that no confusion is likely to result with
regard to LVM’s trademarks is sufficient also to dispose of LVM’s
trade dress claims as well.
Finally, LVM argues that the district court erred in finding that
Haute Diggity Dog’s use of the "CV" and the background design was
a fair use of LVM’s copyrighted Multicolor design. Because LVM
attempts to use a copyright claim to pursue what is at its core a trade-
mark and trade dress infringement claim, application of the fair-use
factors under the Copyright Act to these facts is awkward. See 17
U.S.C. § 107; Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577
(1994). Nonetheless, after examining the record, we agree with the
district court that Haute Diggity Dog’s use as a parody of certain
altered elements of LVM’s Multicolor design does not support a
claim for copyright infringement.
24 LOUIS VUITTON MALLETIER v. HAUTE DIGGITY DOG
The judgment of the district court is
AFFIRMED.