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14. KELLOG CO. V.

NATIONAL BISCUIT CO 305 US 111


FACTS:
Kellogg Company is making and selling "shredded wheat" biscuits under that name, in pillow-shape form,
in competition with a similar product of the National Biscuit Company.
National Biscuit Co. sued Kelllogg for unfair competition. Kellogg insisted that it was only forbid from using
the term ‘shredded wheat’ in conjunction with the “pillow-shaped’ product and not otherwise.
PROCEDURAL HISTORY:
In 1935 the suit was dismissed by the district court stating no ‘passing off’ or deception had been shown
and that the product had passed into public domain upon the expiration of its patent. This decision was
appealed and reversed by the District Court.
JUDGMENT:
Fairness requires that it be done in a manner which reasonably distinguishes its product from that of plaintiff.
Each company sells its biscuits only in cartons. The standard Kellogg carton contains fifteen biscuits; the
plaintiff's twelve. The Kellogg cartons are distinctive. They do not resemble those used by the plaintiff either
in size, form, or color. And the difference in the labels is striking. The Kellogg cartons bear in bold script the
names "Kellogg's Whole Wheat Biscuit" or "Kellogg's
Shredded Whole Wheat Biscuit" so sized and spaced as to strike the eye as being a Kellogg product. It is
true that, on some of its cartons, it had a picture of two shredded wheat biscuits in a bowl of milk which was
quite similar to one of the plaintiff's registered trademarks. But the name Kellogg was so prominent on all
of the defendant's cartons as to minimize the possibility of confusion.
With regards to the trademark rights associated with the pillow shape it was not protected because the
goodwill created by such a form had been established due to its monopoly that had been allowed for by the
patent it had obtained that has since expired. To hold that it is protectable would fly in the face of the entire
purpose of patent law, it is now allowed as part of the public domain. Finally, the court alludes to what would
later be termed as trade dress in regards to the packaging of the product, and explains that Kellogg’s
packaging and marketing was substantially unique so as not to create confusion as to the source or to trade
off the goodwill of National Biscuit’s trade dress. For all these reasons, the Supreme Court reversed with
directions to dismiss.

15. LOUIS VITTON VS. HAUTE DIGGITY (NOV. 13, 2007)


FACTS: Louis Vuitton Malletier S.A. (LVM) (Plaintiff) is a well-known manufacturer and seller of various
luxury goods, including ladies handbags, that has adopted trademarks and trade dress that are well
recognized and have become famous and distinct. LVM (Plaintiff) has registered trademarks for “LOUIS
VUITTON.” Although Plaintiff also markets a limited selection of luxury pet accessories, it does not make
dog toys. Haute Diggity Dog, LLC (Defendant) manufactures and sells a line of pet chew toys and beds
whose names parody elegant high-end brands of products. In particular, Defendant created a line of
“Chewy Vuiton” chew toys that resembled Plaintiff’s handbags. Plaintiff claimed Defendant violated the
Trademark Dilution Revision Act of 2006 (TDRA).
PROCEDURAL HISTORY:

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.

16. WHITMILL VS. WARNER BROS. ENTERTAINMENT (April 28, 2011)


FACTS:
Mr. Whitmill, a visual artist in Missouri, created an original design tattoo on the upper left side of
former world heavyweight champion boxer Mike Tyson’s face. below). When Mr. Whitmill created the
Original Tattoo, Mr. Tyson agreed that Mr. Whitmill would own the artwork and thus, the copyright in the
Original Tattoo. Warner Bros. Entertainment, Inc. — without attempting to contact Mr. Whitmill, obtain his
permission, or credit his creation — has copied Mr. Whitmill’s Original Tattoo and placed it on the face of
another actor in its upcoming motion picture, THE HANGOVER 2. Not only is this infringing copy (the
“Pirated Tattoo) used throughout the movie, but Warner Bros. also uses the Pirated Tattoo extensively in
advertisements and promotions without Mr. Tyson.

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.