While the burden of policing trademark infringement rests on the trademark owner, Starbucks was smart to ignore the bait.Parody as a Defense to Trademark Infringement Although parody is generally not a defense to trademark infringement, courts have nonetheless applied the requisite “likelihood of confusion” test to parodies, noting that a successful parody will rarely be considered infringing. In Louis Vuitton Malletier S.A. v. Haute Diggity Dog, 507 F.3d 252 (4th Cir. 2007), the Court of Appeals affirmed the lower court’s decision and held that “Chewy Vuiton,” a manufacturer of dog chew toys, did not infringe or dilute the trademarks of Louis Vuitton (“LV”). LV, an international gargantuan darling of the fashion elite, manufactures luxury handbags and various leather goods and accessories, including a limited selection of luxury pet accessories.
Courts have defined parody as a work that (1) references the original or famous brand, (2) but makes clear that the work is not the original, famous brand, and (3) communicates some articulable element of satire, ridicule, joking, or amusement. See Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490, 494 (2d Cir. 1989); Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 260 (4th Cir. 2007). Specifically, the district court rejected Louis Vuitton’s argument that “trademark death can occur by a thousand cuts…” and that My Other Bag diluted its famous marks by intentionally designing its totes to evoke Louis Vuitton trademarks to create an association with Louis Vuitton.
The Board went on to dismiss Defining Presence’s reliance on the Chewy Vuiton case, which sustained a parody defense where the mark was used on dog toys. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). First, said the Board, the public itself adopted the “CrackBerry” nickname, and therefore its adoption did not reflect any attempt by applicant to parody RIM’s mark.
[8] In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).[9] Gen. Mills Fun Grp., Inc. v. Tuxedo Monopoly, Inc., 204 USPQ 396 (TTAB 1979)[10]Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 84 USPQ2d 1969, 1973 (4th Cir. 2007).
com/the-worlds-most-valuable-brands/#1c950ba8119c (last accessed Aug. 2, 2020), listing McDonald’s, Budweiser, Coca-Cola, Pepsi, Nescafe, Starbucks and Frito-Lay among the first 50 such brands.2 VIP Prods., LLC v. Jack Daniel’s Props., Inc., 953 F. 3d 1170 (9th Cir. 2020).3 15 U.S.C. § 1125(c)(3).4 See, e.g., Louis Vuitton Malletier S.A.v. Haute Diggity Dog, LLC, 507 F.3d 252, 252 (4th Cir. 2007). But see Anheuser-Busch, Inc. v. VIP Prods., LLC, 666 F. Supp. 2d 974 (E.D. Mo. 2008), where a dog chew toy offered by VIP Products using BUDWEISER trade dress and the BUTTWIPER name was enjoined.
Defendants and applicants frequently claim that their reference to a famous mark qualifies as a fair use, with mixed results (for example, here, here, and here). One decision frequently cited by courts to evaluate a parody defense involves a familiar name , Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). In Haute Diggity Dog, the Fourth Circuit affirmed a finding that a pet toy manufacturer’s use of CHEWY VUITTON in connection pet chew toys constituted a parody that did not infringe Luis Vuitton’s trademark rights.
Thus, a parody relies upon a difference from the original mark, presumably a humorous difference, in order to produce its desired effect. Op. at 56-57(quoting Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 260 (4th Cir. 2007)).Finding no parody in use of the phrase “National Association for the Abortion of Colored People” or the “NAACP” mark, Judge Jackson noted the phrase lacks many of the traditional elements of parody and is almost identical to the NAACP’s name save for one word.
Rather an over-the-top reaction to what some might characterize as parody. More than half a century later but only a few years before B&J v. Rodax, the Fourth Circuit took a more indulgent view of corny puns, in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC et al., 507 F.3d 252 (4th Cir. 2007). The defendant sold plush pet toys with names tweaking famous luxury brands — CHEWY VUITON, CHEWNEL NO. 5 and SNIFFANY & CO..
Since this is a defense, it is not an element of Rosetta Stone’s case; rather, it is an affirmative defense on which Google has the burden of proof. Because success on the “fair use” defense requires an inquiry into the defendant’s good faith, the issue cannot be determined summarily on this record, said the Court. The Court of Appeals also reversed the district court’s summary holding on “dilution by blurring,” distinguishing its own decision in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 267 (4th Cir. 2007). That case, said the Court, involved a parody, which in the Court’s view could actually “enhance the famous mark’s distinctiveness by making it an icon.”
In one of the early parody cases construing the TDRA, the Fourth Circuit held that dog chew toys bearing the name CHEWY VUITON did not dilute the famous LOUIS VUITTON mark. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007) (PDF). While the Court acknowledged that the defendant used CHEWY VUITON as a designation of source for its dog toys, and that the statutory fair use language therefore did not apply, it proceeded to find that the defendant was engaged in a successful parody because under the dilution factors it intended to create a parody and that is how the association would be perceived.