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`1:06cv321(JCC)
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`IN THE UNITED STATES DISTRICT COURT FOR THE
`EASTERN DISTRICT OF VIRGINIA
`Alexandria Division
`LOUIS VUITTON MALLETIER S.A.
`Plaintiff,
`v.
`)
`HAUTE DIGGITY DOG, LLC,
`VICTORIA D.N. DAUERNHEIM, and )
`WOOFIES, LLC
`)
`Defendants.
`M E M O R A N D U M O P I N I O N
`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
`Plaintiff’s 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
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`1:06cv321(JCC)
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`IN THE UNITED STATES DISTRICT COURT FOR THE
`EASTERN DISTRICT OF VIRGINIA
`Alexandria Division
`LOUIS VUITTON MALLETIER S.A.
`Plaintiff,
`v.
`)
`HAUTE DIGGITY DOG, LLC,
`VICTORIA D.N. DAUERNHEIM, and )
`WOOFIES, LLC
`)
`Defendants.
`M E M O R A N D U M O P I N I O N
`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
`Plaintiff’s 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
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`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. Plaintiff’s 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 Plaintiff’s trademarks and copyrights, violate
`Plaintiff’s 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 (1986); Evans v. Techs. Applications &
`Serv., Co., 80 F.3d 954, 958-59 (4th Cir. 1996)(citations
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`omitted). In reviewing the record on summary judgment, “the
`court must draw any inferences in the light most favorable to the
`non-movant” and “determine whether the record taken as a whole
`could lead a reasonable trier of fact to find for the
`non-movant.” 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.
`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.
`
`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
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`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
`Shopping 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 Plaintiff’s 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
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`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 (“Hilfiger's 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
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`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
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`patterns, printed on leather women’s handbags. (Pltf.’s Mot.
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`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 1527.
`i. Vuitton Handbags and Chewy Vuiton Toys
`
`Plaintiff’s trade dress includes one design with a white background and
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`a pastel color pattern consisting of blue, pink, yellow, green, and brown
`marks(Vuitton Monogram Multicolor), including the interlocking L and V. An
`additional trade dress offered by the Plaintiff includes a brown background
`with red cherries and green stems (Vuitton Cerises). Both of Plaintiff’s
`trade dresses are printed on leather handbags. Defendants offer products that
`look similar, but also different. Defendants’ mark and dress are slightly
`different in color and contain an interlocking C and V. But most importantly,
`they are printed on a plush dog toy or a dog bed. Defendants do not make
`high-end leather products or actual purses.
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`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 product-
`type 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 fall into completely
`different industries, and are thus not proximate in this respect.
`ii. Proximity of Louis Vuitton Toys and Pet Products
`to Chewy Vuiton Products
`Vuitton sells a limited amount of pet products, such as
`collars, leashes, leads, and pet carriers, and also sells one toy
`item, a stuffed bear for children. These facts weigh in favor of
`the Plaintiff. Nonetheless, there is not enough similarity
`between the two to likely cause customer confusion. While
`Vuitton makes high-end pet products such as collars and leashes
`that range in price from $215 to $1600, the Chewy Vuiton line
`consists of toys and beds, mostly priced below $20, made for pets
`to destroy or sleep upon–or on occasion to wrestle over with
`their peers or find other, more creative ways to desecrate. 2
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`Plaintiff points out that Chewy Vuiton beds sell for $120, which is
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`somewhat comparable to a $215 collar made by Vuitton. In doing so, Plaintiff
`seeks to compare the single most expensive item made by HDD to the cheapest
`pet item made by Vuitton. Despite the fact that beds are larger and more
`expensive items than collars or leashes, the bed price is still nearly $100
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`Plaintiff manufactures only one toy item, a stuffed bear for
`children. (Pltf.’s Reply at Ex. 3). Plaintiff does not
`manufacture pet toys or any toy versions of its handbags that
`look similar to Defendants’ products. However, Louis Vuitton
`does manufacture a suede pet carrier, which is somewhat similar
`to the Chewy Vuiton products. (Pltf.’s Mot. Summ. J. Ex. A85-
`A86). Accordingly, this factor offers support to Plaintiff’s
`position.
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`iii. Trade and Marketing Channels
`Louis Vuitton products and Chewy Vuiton products are
`primarily sold and marketed in different trade channels. As
`noted, Louis Vuitton does sell a limited number of products to
`pet owners, however these products, as all LVM products, are sold
`exclusively through their own boutique stores or through
`boutiques in department stores. (Pltf.’s Opp. Ex. D). To the
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`contrary, Chewy Vuiton products are primarily sold in retail pet
`stores, and are dispersed to those stores through a distributor
`called Wholesale Pet. (Pltf.’s Mot. Summ. J. Ex. B at 175:19-
`176:5). The only store identified as carrying both Chewy Vuiton
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`less than Vuitton’s cheapest product, while Vuitton’s most expensive pet
`products are priced at $1600. Furthermore, the $120 price does not indicate a
`“high-end” status for dog beds, many of which range above $100.
`Melissa Cohen testified that Vuitton sells “high-end items,” and that
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`all of the Vuitton stores were owned by Louis Vuitton. (Pltf.’s Mot. Summ. J.
`Ex. D). Ms. Cohen further testified that Vuitton operates its own stores in a
`number of high-end department stores, such as Bloomingdale’s, Saks Fifth
`Avenue, Neiman Marcus, and Macy’s in New York City. Id. Vuitton does not
`sell its items through independent third party vendors. Id.
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`and Louis Vuitton products is the Macy’s in New York. Id. at
`175:6-12. Likewise, LVM products are marketed primarily through
`high-end fashion magazines and feature models and celebrities,
`while Chewy Vuiton products are marketed through pet-supply
`channels and feature dogs. (Def.’s Mot. Summ. J. Ex. F; Pltf’s
`Mot. Summ. J. Ex. A).
`Both product lines are also sold and marketed through
`the internet. (Def.’s Mot. Summ. J. Ex. F; Pltf’s Mot. Summ J.
`Ex. A). This fact by itself does not imply that the same trade
`channels were used for the purposes of determining likely
`customer confusion. Reaching this same issue, the Sixth Circuit
`recently concluded that “a non-specific reference to Internet use
`is no more proof of a company's marketing channels than the fact
`that it is listed in the Yellow Pages of the telephone
`directory.” Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623,
`633 (6th Cir. 2002). In that case, the Sixth Circuit outlined
`several additional factors to consider:
`(1) whether both parties use the Web as a
`substantial marketing and advertising channel,
`(2) whether the parties' marks are utilized in
`conjunction with Web-based products, and (3)
`whether the parties' marketing channels
`overlap in any other way.
`Id. (internal quotation marks and citations omitted) (emphasis in
`original). In this case, both Vuitton and HDD use the internet
`as a substantial marketing and advertising channel, and both use
`their marks in conjunction with their web-based products.
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`Finally, the two products are not sold on the same web sites, as
`Vuitton products are sold exclusively through Vuitton’s web site,
`eluxury.com, while HDD products are sold through independent
`vendors. Nonetheless, because both are sold in malls and through
`the internet, there is some overlap between the retail markets
`and trade channels, and this factor weighs in favor of the
`Plaintiff.
`D. Likelihood that Prior Owner will Bridge the Gap Between
`the Products
`Currently, nothing alleged indicates Louis Vuitton’s
`desire to enter the dog toy market. Therefore, this factor
`weighs in favors of the Defendants.
`E. Actual Confusion
`“Actual confusion” means actual consumer confusion that
`allows the seller to pass off his goods as the goods of another.
`The Sports Authority, Inc. v. Prime Hospitality Corp., 89 F.3d
`955, 963 (2d Cir. 1996). Plaintiff is not required to prove
`actual confusion to prove the likelihood of confusion. Pizzeria
`Uno, 747 F.2d at 1527. However, evidence of actual confusion is
`the best evidence of likelihood of confusion. Synergistic Int’l,
`LLC v. Korman, 402 F.Supp.2d 651, 663 (E.D. Va. 2005).
`In this case, Plaintiff has provided no substantial
`evidence of “actual confusion,” and conceded during oral argument
`that no actual confusion exists. In fact, Plaintiff only
`referred to a single instance where Defendants’ customer, Jake’s
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`Dog House (“Jake’s”) referred to HDD’s products as “Louis
`Vuittons.” (Jake’s Dep. Tr. at 45). However, taken in context
`with the remainder of the deposition, it is clear that no actual
`confusion existed. Deponent explained, rather bluntly, “if I
`really thought that a $10 dog toy made out of fluff and stuff was
`an actual Louis Vuitton product, [then] I would be stupid.” Id.
`It is clear from the deposition testimony offered by the
`Plaintiff, taken in its whole context, that no actual confusion
`existed on the part of Jake’s that Chewy Vuiton products were
`actually Louis Vuitton.
`Nor are the alleged misspellings of “Chewy Vuiton” as
`“Chewy Vuitton” indicative of customer confusion. First, the
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`use of the word “Chewy” is not easily mistaken for the French
`first name “Louis,” and clearly indicates parody. Second,
`spelling the second word “Vuiton” or “Vuitton” does not indicate
`any confusion, other than how to spell the word itself. The fact
`that a customer mistakenly spells the parody product with two
`“t”s instead of one does not convey that the customer was
`confused about the source of the product.
`For the foregoing reasons, the Court finds no credible
`evidence of actual confusion. Nothing in the facts presented
`indicates that customers purchasing or viewing “Chewy Vuiton”
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`The Second Circuit reached a similar conclusion in Hormel Foods Corp.
`4
`v. Jim Henson Productions, Inc., 73 F.3d 497, 504 (2d Cir. 1996).
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`products believed those products were made by or associated with
`Plaintiff Louis Vuitton other than as a parody of the Vuitton
`name. Considering all of these facts, this Court finds that the
`lack of actual confusion in this case weighs heavily in favor of
`Defendants.
`F. Bad Faith on Part of Defendants
`Plaintiff argues that Defendants’ use of marks and
`trade dress similar to those of Plaintiff Vuitton were done for
`the purpose of commercial gain, and not parody, and therefore
`done in bad faith. This argument lacks merit. “An intent to
`parody is not an intent to confuse the public.” Jordache
`Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1486 (10th Cir.
`1987). Instead, “[t]he benefit to one making a parody...arises
`from the humorous association, not from public confusion as [to]
`the source of the marks.” Id. “Chewy Vuiton” is a parody of
`“Louis Vuitton.” The benefits that HDD derives from the use of
`this parody arise not from customer confusion, but from the
`humorous association between “Chewy Vuiton,” a dog toy, and the
`high-end line of products made by Louis Vuitton. There is no
`showing of bad faith on the part of the Defendants, and this
`factor weighs heavily in favor of Defendants.
`G. Additional Factors Identified by the Second Circuit:
`Quality of Defendants’ Product and Sophistication of Buyers
`The Second Circuit has identified two further areas of
`consideration to determine if customer confusion exists: (1)
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`quality of Defendants’ products and (2) sophistication of buyers.
`Polaroid Corp. v. Polaroid Electronics Corp., 287 F.2d 492, 495
`(2d Cir. 1961). With respect to the quality factor, the Second
`Circuit has held that similarity in quality enhances the
`likelihood of confusion. Morningside Group, Ltd. v. Morningside
`Capital Group, LLC, 182 F.3d 133, 142 (2d Cir. 1999). With
`respect to the sophistication factor, the Second Circuit has held
`that a substantial price associated with high-end goods “requires
`buyers to exercise care before they part with their money, and
`such sophistication generally militates against a finding of
`confusion.” Charles of the Ritz, Ltd. v. Quality Distribs, Inc.,
`832 F.2d 1313, 1323 (2d Cir. 1987).
`In this case, there is a clear difference in quality
`between Vuitton products and the “Chewy Vuiton” line made by HDD
`and sophistication of the buyers. Louis Vuitton mainly
`manufactures high-quality leather handbags associated with wealth
`and social status. While Vuitton makes some pet products such as
`collars and leashing, ranging in price from $215 to $1600, the
`items are high-end and mainly made of fine leather. To the
`contrary, the “Chewy Vuiton” line consists of plush chew toys and
`beds, mostly priced below $20, made for pets to destroy or sleep
`upon. Plaintiff points out that Chewy Vuiton beds sell for $120,
`which is somewhat comparable to a $215 collar made by Vuitton.
`However, this argument is unconvincing. The dog bed mentioned is
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`the single most expensive item made by HDD, and many dog beds
`range from $50 to $100 in price. On the other hand Vuitton’s
`limited number of pet products begin at $215, the most expensive
`being priced at $1600. Contrary to dog beds, these prices are
`clearly high-end for collars, leashes, and pet carriers.
`H. Conclusion for Trademark Infringement
`For the foregoing reasons, this Court finds, taking the
`evidence in the light most favorable to the Plaintiff, no
`reasonable trier of fact would conclude that likelihood of
`confusion exists between Plaintiff’s and Defendants’ products.
`This Court has considered all of the Pizzeria Uno factors and
`finds that, while the Plaintiff’s mark is strong and there is
`some proximity of the products, the lack of actual confusion and
`bad faith, coupled with the considerations of parody
`substantially outweigh the factors that favor the Plaintiff.
`While consideration of the Pizzeria Uno factors were sufficient
`in making its determination, the Court is further swayed by the
`additional factors set out by the Second Circuit, which also
`favor the Defendants. For these reasons, the Court concludes
`that summary judgment is appropriate on the issue of trademark
`infringement. The Court will therefore deny Plaintiff’s motion
`for summary judgment and grant Defendants’ cross-motion on the
`count of trademark infringement.
`Count II: Dilution
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`Plaintiff seeks an injunction under the Federal
`Trademark Dilution Act (FTDA), 15 U.S.C. § 1125(c). The
`Trademark Dilution Act provides that the owner of a famous mark
`can enjoin “another person's commercial use in commerce of a mark
`or trade name, if such use begins after the mark has become
`famous and causes dilution of the distinctive quality of the
`mark.” CareFirst of Maryland, Inc. v. First Care, 434 F.3d 263,
`274 (4th Cir. 2006)(citing 15 U.S.C. § 1127). The Fourth Circuit
`has defined dilution as “the lessening of the capacity of a
`famous mark to identify and distinguish goods or services.” Id.
`While a court may find dilution even where it does not
`find likelihood of confusion, Id., the Supreme Court has held
`that the dilution statute “unambiguously requires a showing of
`actual dilution, rather than a likelihood of dilution.” Moseley
`v. Secret Catalogue, Inc., 537 U.S. 418, 433 (2003). Actual
`dilution occurs by either a blurring of the mark’s identification
`or a tarnishment of the positive associations the mark has come
`to convey. See id. This action commenced on March 24, 2006.
`However, following the commencement of litigation, the dilution
`statute was amended by Congress to exclude the “actual dilution”
`requirement in place of a “likely dilution” one. See Trademark
`Dilution Revision Act of 2006, Pub. L. No. 109-312, 120 Stat.
`1730 (amending 15 U.S.C. § 1125(c)(1946)). This Court must
`therefore decide the retroactive effect of the amended statute.
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`In Landgraf v. USI Film Products, Inc., 511 U.S. 244
`(1994), the Supreme Court established a two-part test to
`determine the retroactive effect of a statute. First, a court
`should determine “whether Congress has expressly prescribed the
`statute’s proper reach.” Id. at 280. In an instance where
`Congress has proscribed an effective date, courts must respect
`the will of Congress. Id. Second, when Congress has not
`proscribed an effective date, a court must determine if the
`statute will “impair rights a party possessed when [it] acted,
`increase a party’s liability for past conduct, or impose new
`duties with respect to transactions already completed.” Id. If
`it does, then a court should not apply the new statute to the
`pending case. Id.; see also Altizer v. Deeds, 191 F.3d 540, 545
`(4th Cir. 1999)(quoting Landgraf, 511 U.S. at 280). However, the
`Supreme Court also stated that “relief by injunction operates in
`futuro and the right to it must be determined as of the time of
`the hearing.” American Steel Foundries v. Tri-City Central
`Trades, 257 U.S. 184, 201 (1921); see also Landgraf, 511 U.S. at
`273-74. In this case, Plaintiff has pled for injunctive relief
`on the issue of dilution. See Compl. at ¶78. Therefore, the
`amended statute will apply in this case.
`A. Dilution by Blurring
`Dilution by blurring is association arising from the
`similarity between a mark or trade name and a famous mark that
`
`17
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`
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`Case 1:06-cv-00321-JCC-BRP Document 58 Filed 11/03/06 Page 18 of 26 PageID# 18
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`impairs the distinctiveness of the famous mark. See Trademark
`Dilution Revision Act of 2006, Pub. L. No. 109-312, 120 Stat.
`1730. Dilution by blurring occurs when consumers mistakenly
`associate a famous mark with goods and services of a junior mark,
`thereby diluting the power of the senior mark to identify and
`distinguish associated goods and services. Ringling Bros.-Barnum
`& Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev., 955
`F.Supp. 605, 616 (E.D. Va. 1997)(citing Mead Data Cent., Inc. v.
`Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1031 (2d Cir.
`1989). According to the amended statute, in determining whether
`a mark or trade name is likely to cause dilution by blurring, the
`court may consider all relevant factors, including the following:
`(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; and
`(vi) any actual association between the mark
`or trade name and the famous mark.
`Trademark Dilution Revision Act of 2006, Pub. L. No. 109-312, 120
`Stat. 1730. Since the Fourth Circuit has not offered opinion on
`the new “likelihood of dilution” standard, for guidance this
`Court looks to the Second Circuit’s application of New York
`General Business Law § 360-1, which incorporates the likelihood
`18
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`
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`Case 1:06-cv-00321-JCC-BRP Document 58 Filed 11/03/06 Page 19 of 26 PageID# 19
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`of dilution standard now adopted by Congress. Using this
`standard, the Second Circuit and its district courts have held on
`numerous occasions that in the case of parody, “the use of famous
`marks in parodies causes no loss of distinctiveness, since the
`success of the use depends upon the continued association with
`the plaintiff.” See Yankee Publishing, Inc. v. News America
`Publishing, Inc., 809 F.Supp. 267, 282 (S.D.N.Y. 1992)(applying
`New York statute); see also Tommy Hilfiger, 221 F.Supp.2d at 422-
`23 (“the presence of a famous mark on certain products may have
`little diluting effect, particularly where it is obvious that the
`defendant intends the public to associate the use with the true
`owner”); Hormel, 73 F.3d at 506 (finding no likelihood that
`defendant’s puppet “Spa’am” would dilute the association of the
`Hormel mark with “Spam” lunchmeat).
`Defendants do not dispute that the Plaintiff’s mark is
`strong and famous. Nonetheless, this Court finds no likelihood
`that the parody of Plaintiff’s mark by Defendants will result in
`dilution of Plaintiff’s mark. This Court finds, like the New
`5
`York and Second Circuit courts, the mark continues to be
`associated with the true owner, Louis Vuitton. Its 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
`
`This Court also agrees with Defendants’ argument that actual dilution
`5
`does not exist, but in light of the amended statute concentrates instead on
`likelihood of dilution.
`
`19
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`
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`
`upon the continued association with Louis Vuitton. This Court
`finds that no reasonable trier of fact could conclude that
`Plaintiff’s mark is diluted by blurring in this case, and summary
`judgment is appropriate. Accordingly, Defendants’ motion for
`summary judgment will be granted for dilution by blurring.
`B. Dilution by Tarnishment
`Tarnishment occurs when the plaintiff’s trademark is
`likened to products of low quality, or is portrayed in a negative
`context. Deere & Co. v. MTD Prods., 41 F.3d 39, 43 (2d Cir.
`1994). When the association is made through harmless or clean
`puns and parodies, however, tarnishment is unlikely. Jordache
`Enters. v. Hogg Wyld, Ltd., 625 F.Supp. 48, 57 (D.N.M. 1985),
`aff’d, 828 F.2d 1482 (10th Cir. 1987). Plaintiff’s assertions
`that Chewy Vuiton products tarnish LVM’s marks by associating
`“inferior products” with the Vuitton name are baseless, and
`without merit. Plaintiff provides neither examples of actual
`tarnishment, nor any evidence that shows likely tarnishment. 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. Therefore,
`even taking into account the amended statute, this Court
`concludes that no reasonable trier of fact could find for the
`Plaintiff on the issue of dilution by tarnishment. Accordingly,
`
`20
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`Case 1:06-cv-00321-JCC-BRP Document 58 Filed 11/03/06 Page 21 of 26 PageID# 21
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`this Court will grant summary judgment in favor of the Defendants
`on this issue.
`Count III: Counterfeiting
`The Lanham Act defines a counterfeit mark as a
`“spurious mark which is identical with, or substantially
`indistinguishable from, a registered mark.” 15 U.S.C. § 1527.
`Determination of whether certain imported articles bear a
`counterfeit mark is to be determined from the perspective of the
`average purchaser rather than from the perspective of an expert.
`See Montres Rolex, S.A. v. Snyder, 718 F.2d 524 (2d Cir. 1983).
`In this case, the marks are not identical or indistinguishable.
`While they are close enough for the average consumer to
`appreciate the parody, an interlocking “CV” is clearly
`distinguishable from an interlocking “LV”, and the average
`purchaser would not confuse the mark of Chewy Vuiton products
`with those of Plaintiff. Nor are the coloring patterns and
`designs identical or indistinguishable. After considering both
`marks, this Court finds that no reasonable trier of fact could
`conclude otherwise. Therefore, this Court will grant Defendants’
`motion for summary judgment and deny Plaintiff’s motion on this
`count.
`
`Count IV: Copyright Violation
`To prevail on a claim for copyright infringement,
`Plaintiff must show that (1) it owned a valid copyright;
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