507 F.3d 252 (4th Cir. 2007), 06-2267, Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC

Docket Nº:06-2267.
Citation:507 F.3d 252, 84 U.S.P.Q.2d 1969
Party Name: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, Defendant-Appellees. International Trademark Association, Amicus Supporting Appellant.
Case Date:November 13, 2007
Court:United States Courts of Appeals, Court of Appeals for the Fourth Circuit
 
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507 F.3d 252 (4th Cir. 2007)

84 U.S.P.Q.2d 1969

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, Defendant-Appellees.

International Trademark Association, Amicus Supporting Appellant.

No. 06-2267.

United States Court of Appeals, Fourth Circuit.

Nov. 13, 2007

Argued: Sept. 26, 2007.

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)

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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, INTERNATIONAL TRADEMARK ASSOCIATION, New York, New York; Michael Potenza, Timothy T. Howard, DEBEVOISE & PLIMPTON, L.L.P., New York, New York, for Amicus Supporting Appellant.

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.

OPINION

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

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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, Business Week 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

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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.

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); trademark infringement, under Virginia common law; trade dress infringement, 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 principally 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.

II

LVM contends first that Haute Diggity Dog's marketing and sale of...

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