Even before the Supreme Court's DaStar case, the intersection, overlap, conflict, or whatever word one wishes to choose to describe the situation where plaintiff asserts trademark and copyright claims over the same acts with respect to the same goods, was murky. After DaStar, many trademark claims have been dismissed as "mutant" copyright claims. On the defendant's side of the caption, the defense of fair use is frequently asserted, with the caveat that trademark fair use and copyright fair use are not the same.
These issues are seen in the recent Fourth Circuit opinion, Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 2007 WL 3348013 (4th Cit. Nov. 13, 2007), available here. I did a post awhile back on the district court opinion (464 F. Supp.2d 495 (E.D. Va. 2006), here. The court's initial trademark fair use analysis reads just like a copyright fair use analysis:
For trademark purposes, “[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 the Ethical Treatment of Animals v. Doughney (“ PETA ”), 263 F.3d 359, 366 (4th Cir.2001) (internal quotation marks omitted). “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. (internal quotation marks and citation omitted). This second message must not only differentiate the alleged parody from the original but must also communicate some articulable element of satire, ridicule, joking, or amusement. Thus, “[a] parody relies upon a difference from the original mark, presumably a humorous difference, in order to produce its desired effect.” Jordache Enterprises, Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1486 (10th Cir.1987) (finding the use of “Lardashe” jeans for larger women to be a successful and permissible parody of “Jordache” jeans). When applying the PETA criteria to the facts of this case, we agree with the district court that the “Chewy Vuiton” dog toys are successful parodies of LVM handbags and the LVM marks and trade dress used in connection with the marketing and sale of those handbags. First, the pet chew toy is obviously an irreverent, and indeed intentional, representation of an LVM handbag, albeit much smaller and coarser. The dog toy is shaped roughly like a handbag; its name “Chewy Vuiton” sounds like and rhymes with LOUIS VUITTON; its monogram CV mimics LVM's LV mark; the repetitious design clearly imitates the design on the LVM handbag; and the coloring is similar. In short, the dog toy is a small, plush imitation of an LVM handbag carried by women, which invokes the marks and design of the handbag, albeit irreverently and incompletely. No one can doubt that LVM handbags are the target of the imitation by Haute Diggity Dog's “Chewy Vuiton” dog toys. At the same time, no one can doubt also that the “Chewy Vuiton” dog toy is not the “idealized image” of the mark created by LVM. The differences are immediate, beginning with the fact that the “Chewy Vuiton” product is a dog toy, not an expensive, luxury LOUIS VUITTON handbag. The toy is smaller, it is plush, and virtually all of its designs differ. Thus, “Chewy Vuiton” is not LOUIS VUITTON (“Chewy” is not “LOUIS” and “Vuiton” is not “VUITTON,” with its two Ts); CV is not LV; the designs on the dog toy are simplified and crude, not detailed and distinguished. The toys are inexpensive; the handbags are expensive and marketed to be expensive. And, of course, as a dog toy, one must buy it with pet supplies and cannot buy it at an exclusive LVM store or boutique within a department store. In short, the Haute Diggity Dog “Chewy Vuiton” dog toy undoubtedly and deliberately conjures up the famous LVM marks and trade dress, but at the same time, it communicates that it is not the LVM product. Finally, the juxtaposition of the similar and dissimilar-the irreverent representation and the idealized image of an LVM handbag-immediately conveys a joking and amusing parody. The furry little “Chewy Vuiton” imitation, as something to be chewed by a dog, pokes fun at the elegance and expensiveness of a LOUIS VUITTON handbag, which must not be chewed by a dog. The LVM handbag is provided for the most elegant and well-to-do celebrity, to proudly display to the public and the press, whereas the imitation “Chewy Vuiton” “handbag” is designed to mock the celebrity and be used by a dog. The dog toy irreverently presents haute couture as an object for casual canine destruction. The satire is unmistakable. The dog toy is a comment on the rich and famous, on the LOUIS VUITTON name and related marks, and on conspicuous consumption in general. This parody is enhanced by the fact that “Chewy Vuiton” dog toys are sold with similar parodies of other famous and expensive brands-“Chewnel No. 5” targeting “Chanel No. 5”; “Dog Perignonn” target-ing “Dom Perignon”; and “Sniffany & Co.” targeting “Tiffany & Co.” We conclude that the PETA criteria are amply satisfied in this case and that the “Chewy Vuiton” dog toys convey “just enough of the original design to allow the consumer to appreciate the point of parody,” but stop well short of appropriating the entire marks that LVM claims. PETA, 263 F.3d at 366 (quoting Jordache, 828 F.2d at 1486).
The court didn't stop there, though, noting that there could be confusing and non-confusing parodies, but in the end held,
In concluding that Haute Diggity Dog has a successful parody, we have impliedly concluded that Haute Diggity Dog appropriately mimicked a part of the LVM marks, but at the same time sufficiently distinguished its own product to communicate the satire. The differences are sufficiently obvious and the parody sufficiently blatant that a consumer encountering a “Chewy Vuiton” dog toy would not mistake its source or sponsorship on the basis of mark similarity.
Here is the court's entire discussion of the copyright fair use issue:
Finally, LVM argues that the district court erred in finding that Haute Diggity Dog's use of the “CV” and the background design was a fair use of LVM's copyrighted Multicolor design. Because LVM attempts to use a copyright claim to pursue what is at its core a trademark and trade dress infringement claim, application of the fair-use factors under the Copyright Act to these facts is awkward. See 17 U.S.C. § 107; Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994). Nonetheless, after examining the record, we agree with the district court that Haute Diggity Dog's use as a parody of certain altered elements of LVM's Multicolor design does not support a claim for copyright infringement.