Last year, our small Texas law firm of Mason & Petruzzi pulled off a David vs. Goliath upset. We defeated luxury designer Louis Vuitton Malletier in a copyright infringement lawsuit.
LVM sued upstart pet toy-maker Haute Diggity Dog in 2002, claiming the tiny Nevada company’s line of “Chewy Vuiton” and other parody products violated LVM’s copyright.
LVM lost round one. And then it lost on appeal.
Louis Vuitton, along with the International Trademark Association, argued in part that Haute Diggity’s products diluted the LVM brand. The high-powered LVM law team evoked the Trademark Dilution Revision Act, which forbids the use of a famous trademark in a way that would lessen its uniqueness.
The Fourth Circuit U.S. Court of Appeals applied the TDRA. But it found that the success of the parody “Chewy Vuiton” actually drew positive attention to the Louis Vuitton trademark and enhanced the fame of the mark.
The court adhered to the principles of protecting marks from dilution. But the court also understood the consumer’s reaction of humor associated with the pun and how it tended to enhance the iconic status of Louis Vuitton.
The International Trademark Association argued that the previous court erred. The association in its friend-of-the-court brief said the statute only allows defense for parodies not used as a trademark – satirical comedy such as Mad Magazine, for example. The appellate court outright rejected the association’s assertion that a parody defense was not available to a parody such as Chewy Vuiton, which is itself used as a trademark.
So how can smaller defendants prevail against giants?
We have found that not fighting every discovery battle and being upfront during the pre-trial phases of the suit reduces some of the monetary advantages associated with large companies.
Further, the courts, when asked, are fairly accommodating to cost-saving tactics such as court appearances by telephone, telephonic depositions and the like, which reduce costs.
Most importantly, we believe that short and sweet always triumphs over long and verbose. Louis Vuitton asked for and received permission to file an extended appellate brief spanning more than 65 pages. But it was overkill and ultimately buried any good points they may have had.
This case places a clear marker in trademark-parody law by protecting both commercial and non-commercial uses of other’s trademarks when done in a humorous and successful parody.
Small inventors and entrepreneurs also can be secure in knowing that it is entirely feasible to fight a large opponent and prevail.
Haute Diggity’s business model was built on parodying luxury-name products. Other manufacturers were circling. A court defeat would have ruined Haute Diggity.
For any startup like Haute Diggity Dog, the prospect of defending an entire business in the early years of development is daunting, particularly against one of the largest trademark owners in the world.
Although costs were kept to a minimum, litigation is expensive, even if you are merely responding to the other side or court requirements. However, by sticking with its defense and fighting it out, Haute Diggity not only defeated Louis Vuitton, but it protected its entire line of products from all future assertions of dilution and infringement from the likes of Dom Perignon (Dog Perignon), Tiffany & Co. (Sniffany), Mercedes (Furcedes) and others.
Had it not been for this successful suit and definitive appellate victory, Haute Diggity would be out of business or have radically altered its successful line of parody products.
Mason & Petruzzi, based in Dallas and Houston, is a national law practice for the enforcement of intellectual property rights through licensing and litigation.
