Louis Vuitton Malletier S.A. v. Haute Diggity Dog

• Decision Date: 03 November 2006
• Docket Number: No. 1:06cv321(JCC).,1:06cv321(JCC).
• Citation: 464 F.Supp.2d 495
• Parties: LOUIS VUITTON MALLETIER S.A., Plaintiff, v. HAUTE DIGGITY DOG, LLC, Victoria D.N. Dauernheim, and Woofies, LLC, Defendants.
• Court: U.S. District Court — Eastern District of Virginia

464 F.Supp.2d 495

LOUIS VUITTON MALLETIER S.A., Plaintiff, v. HAUTE DIGGITY DOG, LLC, Victoria D.N. Dauernheim, and Woofies, LLC, Defendants.

No. 1:06cv321(JCC).

United States District Court, E.D. Virginia, Alexandria Division.

November 3, 2006.

COPYRIGHT MATERIAL OMITTED

Savalle Charlesia Sims, Arent Fox PLLC, Washington, DC, for Plaintiff.

William Michael Holm, Womble Carlyle Sandridge & Rice PLLC, Vienna, VA, for Defendants.

MEMORANDUM OPINION

JAMES C. CACHERIS, District Judge.

This matter comes before the Court on Plaintiff's and Defendants' cross-motions for summary judgment. This "dog of a case" gave the Court a great amount of facts to chew upon and applicable law to sniff out. Nonetheless, having thoroughly gnawed through the record, this Court finds that no material dispute of fact remains, and summary judgment is appropriate on all counts. For the following reasons, the Court will deny Plaintiffs motion and grant Defendants' motion.

I. Background

Plaintiff, Louis Vuitton Malletier S.A., ("LVM") is a manufacturer of luxury consumer goods, including luggage and handbags. In 1896, LVM created a Monogram Canvas Pattern Design mark and trade dress, which includes, inter alia, an entwined L and V monogram with three motifs and a four pointed star, and is used to identify its products. In 2002, Vuitton introduced a new signature design in collaboration with Japanese designer Takashi Murakami. LVM manufactures a limited number of high-end pet products, such as leashes and collars that range in price from $250 to $1600.

Plaintiff filed this action on March 24, 2006 against Defendants Haute Diggity Dog, LLC ("HDD"), Victoria Dauernheim, and Woofies, LLC d/b/a Woofie's Pet Boutique. HDD is a company that markets plush stuffed toys and beds for dogs under names that parody the products of other companies. HDD sells products such as Chewnel # 5, Dog Perignon, Chewy Vuiton, and Sniffany & Co. in pet stores, alongside other dog toys, bones, beds, and food, and most are priced around $10. Plaintiffs complaint specifically refers to HDD's use of the mark "Chewy Vuiton" and alleges that this mark, as well as other marks and designs that imitate Plaintiffs trademarks and copyrights, violate Plaintiffs trademark, trade dress, and copyright rights. Plaintiff and Defendants have filed cross-motions for summary judgment. These motions are currently before the Court.

II. Standard of Review

Summary judgment is appropriate only if the record shows that "there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Evans v. Techs. Applications & Serv., Co., 80 F.3d 954, 958-59 (4th Cir.1996) (citations omitted). In reviewing the record on summary judgment, "the court must draw any inferences in the light most favorable to the nonmovant" and "determine whether the record taken as a whole could lead a reasonable trier of fact to find for the nonmovant." Brock v. Entre Computer Ctrs., 933 F.2d 1253, 1259 (4th Cir.1991) (citations omitted).

The very existence of a scintilla of evidence or of unsubstantiated conclusory allegations, however, is insufficient to avoid summary judgment. Anderson, 477 U.S. at 248-52, 106 S.Ct. 2505. Rather, the Court must determine whether the record as a whole could lead a reasonable trier of fact to find for the non-movant. Id. at 248, 106 S.Ct. 2505.

III. Analysis

Count I: Trademark Infringement

Plaintiff and Defendants have filed cross-motions for summary judgment on the issue of trademark infringement. To prevail on a claim for trademark infringement, Plaintiff must show that it possesses a protectable mark, which Defendants used in commerce in connection with sale, offering for sale, distribution, or advertising in a manner likely to confuse customers. People for Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 364 (4th Cir.2001). The unauthorized use of a trademark infringes the trademark holder's rights if it is likely to confuse an "ordinary consumer" as to the source or sponsorship of the goods. Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316, 318 (4th Cir.1992).

Factors considered when determining the likelihood of confusion are: (1) strength and distinctiveness of the plaintiff's mark; (2) degree of similarity between the two marks; (3) similarity of the products that the marks identify; (4) similarity of the facilities the two parties use in their business; (5) similarity of the advertising used by the two parties; (6) defendant's intent; and (7) actual confusion. Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir.1984). No single factor is dispositive, and these factors are not of equal importance or relevance in every case. Petro Stopping Centers v. James River Petroleum, Inc., 130 F.3d 88, 91 (4th Cir.1997). This Court must carefully consider each of these factors and determine by a totality of the circumstances if likelihood of confusion exists, and then determine if summary judgment is appropriate for Plaintiff or Defendants.

A. Strength of Plaintiffs Mark

Strength of mark is usually a strong factor in determining customer confusion. However, in cases of parody, the opposite can be true. See, e.g., Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F.Supp.2d 410, 416 (S.D.N.Y. 2002). A "parody" is defined as a "simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark's owner." People for Ethical Treatment of Animals, 263 F.3d at 366 (citing LL Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 34 (1st Cir.1987)). 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. In cases of parody, a strong mark's fame and popularity is precisely the mechanism by which likelihood of confusion is avoided. See Hormel Foods Corp. v. Jim Henson Productions, 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)("[c]ertainly it is unremarkable that [defendant] selected as the target of parody a readily recognizable product; indeed, one would hardly make a spoof of an obscure or unknown product!"); see also Hilfiger, 221 F.Supp.2d at 416 ("Hilfigees famous mark likely allows consumers both immediately to recognize the target of the joke and to appreciate the obvious changes to the marks that constitute the joke").

In the Tommy Hilfiger case, cited by Defendants, the Southern District of New York dismissed Plaintiff Hilfiger's claim of infringement on summary judgement, finding the use of the name "Timmy Holedigger" for a brand of pet perfume was a permissible parody of the Hilfiger name and did not infringe Hilfiger's trademark. 221 F.Supp.2d at 420. The Court found that although Hilfiger was in the fragrance business, it did not manufacture pet perfumes, and the use of the name "Timmy Holedigger" was an obvious parody. Id.

While it is undisputed that Plaintiff possesses a strong and widely recognized mark, this Court is persuaded by the factually similar Hilfiger decision. The name "Chewy Vuiton" is, like "Timmy Holedigger," an obvious parody of a famous brand name. The fact that the real Vuitton name, marks, and dress are strong and recognizable makes it unlikely that a parody — particularly one involving a pet chew toy and bed — will be confused with the real product. As the Hilfiger Court held, "[a] distinctive mark will not favor plaintiff in these circumstances." Id. at 416.

B. Similarity of the Marks

The next factor that is to be considered is the similarity of the marks and trade dress. Once again, Defendants do not deny that the marks are similar, but argues that the name "Chewy Vuiton" and the associated marks and colorings are a parody of the Vuitton name and marks. As stated before, similarity is an essential part of a parody, as the similar marks and trade dress 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." People for the Ethical Treatment of Animals, 263 F.3d at 366. In this case, Plaintiff's marks contain an interlocking L and V, with two distinct coloring patterns, printed on leather women's handbags.¹ (Pltf.'s Mot. Summ. J. Ex. at A4-A5). The marks used by Defendants are an interlocking C and V with similar coloring schemes and patterns. There is no doubt that the two are similar. Nonetheless, this Court has considered the evidence, and finds that two simultaneous messages are conveyed by Defendants' marks and dress. The marks and dress are similar enough for the average consumer to recognize a humorous association with the Vuitton mark, without likely confusing that same customer that it really is a Vuitton product. The similarities do exist, but they are necessary as part of the parody, for without them, no parody exists.

C. Proximity of the Products

The Court must next consider the proximity of the products. The Court will analyze the similarity of the facilities and advertising that the Plaintiff and Defendants use in their businesses, as well as the similarities in the products themselves. Pizzeria Uno, 747 F.2d at 152'7.

i. Vuitton Handbags and Chewy Vititon Toys

The products directly at issue in this case are the Vuitton handbags and the Chewy Vuiton toys, which parody them. Comparing the two sets of products, this Court finds that Vuitton's high-end, leather luxury handbags share little producttype similarity to a plush dog toy or dog bed that is shaped like a handbag. Defendants' products are not bags, are not made out of leather, and are clearly not meant to be used as handbags, even for children. After carefully considering each product, this Court finds that the two product lines...