The Trademark Dilution Revision Act's Nullifying Effect on Famous Mark Holder's Dilution Claims

Marquette Intellectual Property Law Review Volume 23 Issue 1 Article 7 2019 The Trademark Dilution Revision Act's Nullifying Effect on Famous Mark Holder's Dilution Claims Kathleen Bodenbach Follow this and additional works at: https://scholarship.law.marquette.edu/iplr Part of the Entertainment, Arts, and Sports Law Commons, Intellectual Property Law Commons, and the Marketing Law Commons Repository Citation Kathleen Bodenbach, The Trademark Dilution Revision Act's Nullifying Effect on Famous Mark Holder's Dilution Claims, 23 Marq. Intellectual Property L. Rev. 89 (2019). Available at: https://scholarship.law.marquette.edu/iplr/vol23/iss1/7 This Comment is brought to you for free and open access by the Journals at Marquette Law Scholarly Commons. It has been accepted for inclusion in Marquette Intellectual Property Law Review by an authorized editor of Marquette Law Scholarly Commons. For more information, please contact . 13020 BODENBACH (DO NOT DELETE) 1/30/20 4:17 PM THE TRADEMARK DILUTION REVISION ACT’S NULLIFYING EFFECT ON FAMOUS MARK HOLDER’S DILUTION CLAIMS KATHLEEN BODENBACH1 INTRODUCTION ............................................................................................... 89 I. THE RELATIONSHIP BETWEEN TRADEMARK, DILUTION, AND PARODY ..... 91 A. Trademark ....................................................................................... 91 B. Dilution and Parody ........................................................................ 92 II. THE FASHION INDUSTRY ............................................................................ 94 A. Limited Legal Protections for Fashion............................................ 94 B. Louis Vuitton .................................................................................. 96 1. Parody Protects “Chewy Vuiton” Dog Toys ............................ 96 2. My Other Bag Business Model Also Protected by Parody ....... 97 3. Louis Vuitton’s Unsuccessful Writ of Certiorari to the United States Supreme Court ............................................................. 99 4. Parodies in the Past and Today ............................................... 101 III. IMPLICATIONS FOR THE FUTURE ............................................................. 102 CONCLUSION ................................................................................................. 103 INTRODUCTION In 1995 the Federal Trademark Dilution Act (FTDA) was passed. The FTDA defined dilution as “the lessening of the capacity of a famous mark to identify and distinguish goods or services.”2 Before 1995, protection against dilution was a state matter that Congress felt was inadequate “because famous marks ordinarily are used on a nationwide basis . . . [and] some courts are reluctant to grant nationwide injunctions for violation[s] of state law.”3 Later in 2006, the Trademark Dilution Revision Act (TDRA) amended the FTDA and 1. J.D. Candidate at Marquette University Law School (May 2019). I would like to thank my family for their constant support during my time in law school. 2. Federal Trademark Dilution Act, 15 U.S.C. § 1127 (2005). 3. H.R. REP. NO. 104-374, at 3-4 (1995). 13020 BODENBACH (DO NOT DELETE) 90 MARQ. INTELL. PROP. L. REV. 1/30/20 4:17 PM [Vol. 23:1 explicitly provided a fair use defense to dilution for parodies.4 Notably, parody is not available as a fair use defense when the allegedly invalid use serves as a designation of source.5 Meaning that for the fair use parody defense to apply, the parody must not simultaneously operate as a designation of source while acting as a parody. However, courts have largely failed to adequately assess this. Instead, the parody defense’s impact has been that once another’s use of the famous mark is deemed a parody, then the famous mark holder’s dilution claim fails without any meaningful discussion of whether the alleged diluting use is operating as a designation of source. This is frustrating to famous mark holders because, commercially, when trademarks are subjected to mockery or become the butt of a joke, mark holders want to enjoin such harmful uses whenever possible. 6 Today, the TDRA parody exception is strong. Once a use is labeled “parody” there is little opportunity for the famous mark holder to stop the use.7 Following the 2006 TDRA amendments, highly creative industries, such as fashion, have been fighting an uphill battle to protect their trademarks that fuel a billion-dollar industry.8 Application of the TDRA’s parody exception showcases the law’s failure to adequately protect trademarks in highly creative and competitive industries, such as fashion. While the FTDA sought to protect investments in developing and sustaining famous marks that stretch across the country from devaluation by dilution, the TDRA parody exception carved a hole in the law for almost blanket protection of uses labeled a parody by courts who ignore whether the parody is also a designation of source. Currently, parody is interpreted so broadly that the TDRA’s exception makes it difficult for trademark holders to protect their trademarks in all but extreme cases. This comment will address how the TDRA has left famous mark holders, particularly high-end fashion house Louis Vuitton, with little in its arsenal to prevent others from mocking and devaluing its marks despite its worthy efforts. Part II addresses the relationship between trademark infringement, dilution, and parody. Part III takes a closer look at fashion giant Louis Vuitton’s strides to protect its famous marks and the courts’ differing approaches to assessing whether a parody exists. Part III also addresses the relationship between parody 4. Trademark Dilution Revision Act, 15 U.S.C. § 1125(c) (2006). 5. Id. at § 1125 (c)(3)(A)(ii). 6. Justin J. Gunnell, Evaluation of the Dilution-Parody Paradox in the Wake of the Trademark Dilution Revision Act of 2006, 26 CARDOZO ARTS & ENT. L.J. 441, 442 (2008). 7. Id. 8. Joint Economic Committee, Economic Impact of the Fashion Industry, (Feb. 6, 2015) https://maloney.house.gov/sites/maloney.house.gov/files/documents/The%20Economic%20Impact% 20of%20the%20Fashion%20Industry%20—%20JEC%20report%20FINAL.pdf [https://perma.cc/P4RJ-ELG8]. 13020 BODENBACH (DO NOT DELETE) 2019] 1/30/20 4:17 PM THE TRADEMARK DILUTION REVISION ACT 91 when it does and does not operate as a designation of source. Part IV offers a discussion of the future implications due to the court’s treatment of the parody exception. I. THE RELATIONSHIP BETWEEN TRADEMARK, DILUTION, AND PARODY A. Trademark To best understand dilution, it must first be differentiated from trademark infringement, which in turn should be viewed in contrast to patent and copyright infringement. Trademark infringement claims require markedly different elements than copyright and patent infringement claims.9 In a trademark infringement action, the plaintiff must show that consumers are likely to be confused about a product’s source or fals (...truncated)