Parody in the realm of trademark law requires a balancing of the rights of the trademark holder against the right of free speech. In Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, the United States District Court for the Southern District of New York landed on the side of free speech in determining that the use of TIMMY HOLEDIGGER for a pet perfume did not infringe Tommy Hilfiger’s (“Hilfiger”) TOMMY HILFIGER and flag design trademarks. Tommy Hilfiger’s lawsuit was dismissed on the ground that there was no genuine issue of material fact and, therefore, no triable dispute.

The TIMMY HOLEDIGGER perfume was one of several in Nature Labs’ line of animal perfumes which parodied designer fragrances. The Nature Lab fragrances were sold in bottles similar to the original, designer fragrances and accompanied by retail displays labeled, “famous pet cologne.” Some displays also included the slogan, “Strong enough for a man, but made for a chihuahua.” Nature Lab’s fragrances were sold primarily through gift shops and pet stores where they retailed for approximately $10 per bottle. The bottles carried a disclaimer noting: “This imitation fragrance is not related to Tommy Hilfiger Licensing, Inc.” and a label consisting of inverted side-by-side yellow and red triangles bordered on top and bottom by a blue stripe with white letters above the phrase, “If You Like Tommy Hilfiger Your Pet Will Love Timmy Holedigger.”

In determining the trademark infringement, false designation of origin and unfair competition claims, the court analyzed whether there was a likelihood of confusion resulting from Nature Labs’ use of TIMMY HOLEDIGGER. Nature Labs denied any likelihood of confusion since TIMMY HOLEDIGGER is an obvious parody of TOMMY HILFIGER and parodies are a protected form of free expression under the First Amendment. Hilfiger, on the other hand, asserted that there was no parody, since Nature Labs did not make a specific comment about Hilfiger customers or products. The court disagreed with Hilfiger, noting that even if Nature Labs' use is not technically a parody, use as a pun or comical expression is entitled to First Amendment protection.

The court’s analysis under the eight likelihood of confusion factors weighed heavily in favor of Nature Labs. Notably, not a single factor favored Hilfiger. In particular, the court found that there was a lack of similarity between the marks and that the products were not marketed or sold in close proximity to each other. Moreover, the high level of sophistication among Hilfiger’s customers also weighed against a finding of a likelihood of confusion, while the strength of Hilfiger’s mark and the quality of Nature Labs’ products were neutral factors. The court noted that the strength of Hilfiger’s mark, in fact, allowed customers to recognize TIMMY HOLEDIGGER as a spoof.

The court also rejected Hilfiger’s dilution claims on the basis of either blurring or tarnishment. While the court determined that the TOMMY HILFIGER mark has the requisite fame for a dilution claim, there was no dilution by blurring given its determination that there was no likelihood of confusion. The court also determined that there was no tarnishment in this case, since Hilfiger failed to submit evidence in support of a disparity in quality between the two products. The court disagreed that mere association with pets was sufficient to tarnish Hilfiger’s mark.

Hilfiger’s false advertising claim similarly failed, since it could not demonstrate either that the advertisement was literally false or, though literally true, was likely to mislead or confuse consumers. In this regard, Hilfiger produced no evidence of the composition of the perfumes and, therefore, could not prove that its claim “If you like Tommy Hilfiger, your pet will love Timmy Holedigger” was literally false. There also was no evidence in the nature of consumer surveys or the like to meet its burden that the statement was misleading.

Hilfiger’s failure to survive summary judgment may encourage others to extend the defense of parody in trademark infringement claims. It is noted, however, that the result in Hilfiger may very well have been different if the respective products were in direct competition with each other.