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On cross-motions for summary judgment, the district court concluded that Defendant “Chewy Vuiton” dog
toys were successful parodies of Plaintiff’s trademarks, designs, and products, and on that basis, entered
judgment in favor of Haute Diggity Dog (Defendant) and all of LVM’s (Plaintiff) claims. The court of appeals
granted review.
JUDGMENT:
Trademark dilution by blurring does not occur under the Trademark Dilution Revision Act of 2006 where a
famous and distinctive mark is parodied, but the mark is only mimicked and not actually used. To state a
dilution claim under the TDRA, a plaintiff must show: (1) that the plaintiff owns a famous mark that is
distinctive; (2) that the defendant has started using a mark in commerce that allegedly is diluting the famous
mark; (3) that a similarity between the defendant’s mark and the famous mark gives rise to an association
between the marks; and (4) that the association is likely to impair the distinctiveness of the famous mark or
likely to harm the reputation of the famous mark.
In this case, the only statutory factor at issue is the fourth factor—whether the association between Haute
Diggity Dog’s (Defendant) marks and LVM’s (Plaintiff) marks will impair the distinctiveness of Plaintiff’s
marks. Plaintiff suggests that any use by a third person of an imitation of its famous marks dilutes the
famous marks as a matter of law. However, this interpretation goes too far.
The imitations by Defendant are intentionally imperfect to clearly represent a parody. Defendant
intentionally associated its marks, but only partially and imperfectly, so as to convey the simultaneous
message that it was not in fact a source of Plaintiff products. Rather, as a parody, it separated itself from
the Plaintiff marks so as to make fun of them.
As for defenses, Warner Brothers asserts among others that tattoos on skin are not copyrightable and
Tyson's signed release, acknowledging Whitmill as the tattoo's owner, is void against public policy and/or
unconscionable.
PROCEDURAL HISTORY:
The Honorable Catherine D. Perry issued an oral opinion denying S. Victor Whitmill a preliminary
injunction in his tattoo copyright suit against Warner Brothers and the Hangover II. However, Judge Perry
went on to underscore the lack of evidence regarding any kind of license for Warner Brothers to use the
tattoo. Thus, Warner Brothers' use of the tattoo was unauthorized. She also noted that Tyson's trademark
application was not inconsistent with Whitmill's copyright.
JUDGMENT:
In Anderson v. City of Hermosa Beach, the Ninth Circuit found that tattoos are sufficiently imbued with
elements of communication to fall under the First Amendment, and deserve the protection of freedom of
expression. In this light, the protection may also extend to copyright, which applies to creative expressions
fixed in tangible media. Instead of drawing on paper, you’re drawing on skin. Whitmill may have a substantial
case, as if his song or poster were used in the film without permission or credit.