Tommy Hilfiger Licensing v. Nature Labs, LLC

• Decision Date: 13 August 2002
• Docket Number: No. 99 CIV.10713(MBM).,99 CIV.10713(MBM).
• Citation: 221 F.Supp.2d 410
• Parties: TOMMY HILFIGER LICENSING, INC., Plaintiff, v. NATURE LABS, LLC, Defendant.
• Court: U.S. District Court — Southern District of New York

Page 410

221 F.Supp.2d 410

TOMMY HILFIGER LICENSING, INC., Plaintiff, v. NATURE LABS, LLC, Defendant.

No. 99 CIV.10713(MBM).

United States District Court, S.D. New York.

August 13, 2002.

COPYRIGHT MATERIAL OMITTED

Louis S. Ederer, Esq., Joseph H. Lessem, Esq., Gursky & Ederer, New York City, for Plaintiff.

Robert Mason, Esq., Mason & Petruzzi, Dallas, TX, Adam D. Cole. Esq., Greenberg Traurig, New York City, for Defendant.

OPINION & ORDER

MUKASEY, District Judge.

Defendant Nature Labs, LLC manufactures, markets and sells a line of pet perfumes whose names parody elegant brands sold for human consumption — Timmy Holedigger (Tommy Hilfiger), CK-9 (Calvin Klein's cK-1), Pucci (Gucci), Bono Sports (Ralph Lauren's Polo Sports), Miss Claybone (Liz Claiborne), and White Dalmations (Elizabeth Taylor's White Diamonds). Most of the companies that purvey these expensive human fragrances have chosen either to accept the implied compliment in this parody — that the mere association of their high-end brand names with a product for animals is enough to raise a smile — or, if they have taken offense, to suffer in silence. Not so plaintiff Tommy Hilfiger Licensing, Inc., which sues for trademark infringement, trademark dilution, false designation of origin, false advertising, and related claims under New York statutory and common law. Defendant moves for summary judgment. For the reasons stated below, defendant's motion is granted.

I.

The following facts are not in dispute. Tommy Hilfiger Licensing, Inc. ("Hilfiger") is the owner of the world-famous TOMMY HILFIGER and flag design trademarks used in connection with the sale of numerous high-end products, including fragrances. (Compl.¶ 9) The flag design mark is comprised of a combination of red, white, and blue geometric shapes. (Id. ¶ 8) These marks are federally registered, and several of those registrations have achieved incontestable status pursuant to 15 U.S.C. § 1065. (Id. ¶ 10)

In 1995, Nature Labs began developing its line of parody perfume products for use on pets. (Harris Dep. at 14; Pl. 56.1 ¶ 1; Def. 56.1 ¶ 1) Nature Labs' initial spoof of Hilfiger was called Tommy Holedigger and had a flag-shaped label with side-by-side red and white squares bordered on top and bottom by a blue stripe with white letters. Hilfiger complained that this use infringed its marks. Nature Labs then changed the name to Timmy Holedigger and changed the label to its present form: inverted side-by-side yellow and red triangles bordered on top and bottom by a blue stripe with white letters.¹ Beneath the new logo design, the following phrase appears: "If You Like Tommy Hilfiger Your Pet Will Love Timmy Holedigger." Although neither party claims to have performed a disciplined olfactory comparison or chemical analysis, John Harris, the general partner of Nature Labs, testified at his deposition that the two scents are similar, based on his recollection of Hilfiger cologne. An asterisk following the words "Tommy Hilfiger" references a disclaimer in red type on the back label, which states, "This imitation fragrance is not related to Tommy Hilfiger Licensing, Inc." (Pl. 56.1 ¶ 7; Def. 56.1 ¶ 7; Lessem Decl. Ex. B; Harris Dep. at 56, 105-06) Another current version of the product, a two-ounce bottle being marketed primarily to PetCo, changes the flag-shape label to a bone with red and yellow triangles and a thick blue border. (Harris Dep. at 74; Lessem Decl. Ex. E) Hilfiger persists that these uses constitute unlawful use of its trademarks.

As noted, Nature Labs' line of animal perfume includes parodies of several designer fragrances. (Pl. 56.1 ¶ 2; Def. 56.1 ¶ 2) All the parody pet colognes are packaged in the same type of bottle, and Nature Labs' resellers stock at least three and often more of the pet colognes, displaying them next to one another. (Id. ¶ 3) The displays Nature Labs provides to its retailers are labeled "famous pet cologne"; some also include the slogan "Strong enough for a man, but made for a chihuahua." (Lessem Decl. Exs. D, E) Nature Labs sells its products primarily to pet stores and gift shops, where they retail at approximately $10.00 per four-ounce bottle. (Harris. Dep. at 41, 44). No company other than Tommy Hilfiger has complained to Nature Labs that Nature Labs is inappropriately using its marks. (Pl. 56.1 ¶ 4; Def. 56.1 ¶ 4)

II.

Plaintiff's complaint sets forth six categories of claims: (1) trademark infringement under section 32 of the Lanham Act, 15 U.S.C. § 1114, and New York common law; (2) false designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) unfair competition under New York common law; (4) trademark dilution under section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), and New York General Business Law § 360-l; (5) false advertising under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); and (6) deceptive business practices under New York General Business Law § 349.²

A. Trademark Infringement, False Designation of Origin, and Unfair Competition

The central issue in an action for trademark infringement or false designation of origin under the Lanham Act is whether the unauthorized use of the mark is "likely to cause confusion." 15 U.S.C. § 1114(1); 15 U.S.C. § 1125(a)(1)(A). Confusion exists where there is a "likelihood that an appreciable number of ordinary prudent purchasers" will be misled or confused as to the source of the goods in question, Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir.1978), or where consumers are likely to believe that the mark's owner sponsored, endorsed, or otherwise approved of the defendant's use of the mark, Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 204-05 (2d Cir.1979). The court's conclusion as to whether there is a likelihood of confusion also determines plaintiff's common-law trademark infringement and unfair competition claims. See Pirone v. MacMillan, Inc., 894 F.2d 579, 581, 584-85 (2d Cir.1990).

Hilfiger contends that defendant's use of the Tommy/Timmy Holedigger name³ and flag design is likely to cause confusion in the marketplace. Nature Labs appears to defend on two grounds: First, it asserts that there is no likelihood of confusion because the use constitutes an obvious parody. Second, it argues that even if there were some confusion, trademark parodies are a protected form of expression under the First Amendment.

Turning first to the second defense — upon which Nature Labs principally relies — the Second Circuit has recognized that where the unauthorized use of a trademark is part of an expressive work, such as a parody, the Lanham Act must be construed narrowly. Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806, 813 n. 14 (2d Cir.1999) (quoting Restatement (Third) of Unfair Competition § 25 cmt. i (1995)). Specifically, it has held that the public interest in avoiding consumer confusion must be balanced against the public interest in free speech. Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ'g, 886 F.2d 490, 494 (2d Cir.1989). Cases finding that First Amendment interests prevail involve nontrademark uses of mark — that is, where the trademark is not being used to indicate the source or origin of consumer products, but rather is being used only to comment upon and, in the case of parody, to ridicule, the trademark owner. See, e.g., id.; Charles Atlas, Ltd., v. DC Comics, Inc., 112 F.Supp.2d 330 (S.D.N.Y. 2000); Yankee Publ'g Inc. v. News Am. Publ'g Inc., 809 F.Supp. 267 (S.D.N.Y. 1992). In such cases, the parodist is not trading on the good will of the trademark owner to market its own goods; rather, the parodist's sole purpose for using the mark is the parody itself, and precisely for that reason, the risk of consumer confusion is at its lowest. See id.

The balancing test adopted by the Second Circuit thus takes into account the purpose behind trademark law, and "allows greater latitude for works such as parodies, in which expression, and not commercial exploitation of another's trademark, is the primary intent, and in which there is a need to evoke the original work being parodied." Cliffs Notes, 886 F.2d at 495.

Hilfiger argues that Nature Labs is not entitled to any consideration under the First Amendment because, first, its product admittedly makes no comment about Hilfiger, and second, the use of the mark as a source identifier on the pet perfume is a trademark use of the mark. Hilfiger points out that when asked at his deposition whether his product was intended to make any comment about Hilfiger, Hilfiger products, or Hilfiger customers, John Harris, the general partner of Nature Labs, said no. (Harris Dep. at 36-37) Harris did, however, testify that he was intending to create a "parody . . . target[ing] . . . Tommy Hilfiger," "a fun play on words," or "spoof . . . [t]o create enjoyment, a lighter side." (Id. at 30-31, 36) Although Harris had difficulty expressing the parodic content of his communicative message, courts have explained that:

Trademark parodies . . . do convey a message. The message may be simply that business and product images need not always be taken too seriously; a trademark parody reminds us that we are free to laugh at the images and associations linked with the mark. The message also may be a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark's owner.

See L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 34 (1st Cir.1987); see also Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316, 321 (4th Cir.1992)(quoting id.). One can readily see why high-end fashion brands would be ripe targets for such mockery, and why pet perfume is a clever vehicle for it. Even if not technically a parody, Nature Labs' use is at least a pun or comical expression — ideas also held to be entitled to First Amendment protection. See Yankee Publ'g, 809 F.Supp. 267, 279 n. 11; Charles Atlas, 112...