Something to Chew On: The Parody Defense to Trademark Infringement

When pet toy maker Haute Diggity Dog, LLC designed its “Chewy Vuiton” dog toy to resemble Louis Vuitton’s iconic monogram pattern, it was marketed as a humorous and playful parody of LV’s luxury designer handbags. Louis Vuitton, however, was not amused, and sued Haute Diggity Dog for trademark infringement and dilution, arguing that the use of their well-known monogram design in the pet toy created confusion among consumers and harmed the distinctiveness of their trademark.  The courts disagreed, finding the dog toy parody created no likelihood of confusion by consumers and no harm to Louis Vuitton’s trademark.[1]

The Parody Defense

Parody is the use of humor, satire, or mockery to comment on or criticize a particular subject, which sometimes may be a well-known brand or trademark. The Lanham Act recognizes an exception to trademark infringement when someone uses someone else’s trademark in a parodic way that does not cause consumer confusion as to the source of the goods or services.  A successful parody for trademark purposes is “a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner.”[2] This is commonly referred to as the “parody defense.”

Factors in the Parody Defense

Two primary factors must be considered to determine whether a particular use qualifies as a parody under the Lanham Act.

• Likelihood of Confusion: The use of a trademark in a parody should not create a likelihood of confusion among consumers. This determination is based on several material factors including the similarity of the marks and the similarity of the goods or services the marks identify.

• Comment or Critique: Parody should convey some form of commentary or criticism about the trademark, brand, or its products, go beyond mere imitation and serve a satirical purpose. There must be a juxtaposition of similar and dissimilar in a way that instantly comes across as a joking and amusing parody.

First Amendment Protection?

More recently, in Jack Daniel’s Props. v. VIP Prods. LLC[3], the owner of trademarks in Jack Daniel’s bottle had successfully brought a suit for trademark infringement against a maker of squeaky, chewable dog toy called “Sad Spaniels”, which was designed to look like a bottle of Jack Daniel’s whiskey.  The lower court found that despite being a parody, the use constituted trademark infringement based on likelihood of confusion. The Ninth Circuit, however, held that the dog toy parody could be subject to protection under the First Amendment.  The Supreme Court considered this issue earlier this year but held that parody trademarks do not receive special First Amendment protection when they function as trademarks. The Court held that the typical likelihood of confusion test applies to infringement claims involving parody marks used as source indicators, sending the case back to the lower courts to evaluate under the likelihood of confusion standard.  However, the Court did not offer guidance for evaluating brands used in creative works where those brands do not function to indicate the source of goods or services.

Conclusion

Parody serves as an exception to trademark infringement that  allows the creative and humorous expression of ideas without compromising the rights of trademark owners. Nonetheless, the boundaries between parody and infringement may sometimes be blurred, so creators and businesses should exercise caution and seek legal counsel to ensure that their parodic works meet the legal criteria necessary to avoid trademark infringement.

The information contained herein is provided for general informational purposes only and may not reflect the current law in your jurisdiction. No information contained in this blog should be construed as legal advice from Shumaker Williams P.C. or the individual author, nor is it intended to be a substitute for legal counsel on any subject matter. This blog is current as of the date of original publication.

[1]              Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (2007).
[2]              People for the Ethical Treatment of Animals v. Doughney (“PETA”), 263 F.3d 359, 366 (4th Cir. 2001).
[3]              143 S. Ct. 1578 (Decided June 8, 2023).