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Monday, 6 November 2006

FIRST US DILUTION REVISION ACT 2006 CASE


The IPKat is thankful to Lee Curtis for tipping him off about Louis Vuitton v Haute Diggity Dog, decided by the US District Court for the Eastern Circuit of Virginia and possibly the first case to be decided under the Dilution Revision Act 2006 (readers, if you know of any earlier cases, please drop the IPKat a line).

The case noted by Businesswire, but the IPKat has had sight of the full transcript.

HDD sells parody plush toys and beds for dogs, under names such as Jimmy Chew, Sniffany & Co and the subject of this case – Chewy Vuitton. Louis Vuitton wasn’t happy, and brought an action for trade mark infringement, trade mark infringement and dilution. While the case was pending, the Trademark Dilution Revision Act 2006 passed into law.

The judge granted summary judgment in the defendant’s favour. As well as dismissing the two infringement claims, he found no dilution, applying the 2006 Act.

Although the case began before the new law was in force, the rule according to the Supreme Court is “relief by injunction operates in futuro and the right to it must be determined as of the time of the hearing.” Since Louis Vuitton was seeking an injunction, the 2006 Act applied. This meant that the correct standard with likely, rather than actual dilution.

However, in applying the dilution tests, the judgment gets disappointing. The judge notes the existence of a new definition and six-part test for blurring, before going saying that since the Fourth Circuit hasn’t ruled on the test, he will look to the New York state law and Second Circuit law (some of which predates the 1995 Act), which has a likely dilution standard. That old law dictated that parody use will not affect the bond between the trade mark and its owner and so no blurring could result.

The tarnishment argument was also dismissed since the only harm Louis Vuitton could come up with was the ‘flimsy’ possibility that a dog might choke on a defective HDD product. Again the court cited pre-1995 case law.

The IPKat is glad that parody use was not caught under the dilution law. However, he wonders what the point is of having a shiny new dilution statute if courts ignore the tests therein and apply tests derived no even from the previous law, but instead from the state law that predates that. It’s early days, but the IPKat reckons his predictions that judged determined to derail the new dilution regime will do so subtly by continuing to have recourse to the position before the 2006 Act may yet come to pass.

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