United States: In Louis Vuitton Trademark Suit, Second Circuit Says Parody Prevails Even If Brand Owner Doesn't "Get" The Joke

The U.S. Court of Appeals for the Second Circuit recently affirmed the Southern District of New York's order on summary judgment that My Other Bag's canvas tote bags do not dilute or infringe Louis Vuitton's trademarks for its luxury handbags. Instead, the court ruled, canvas tote bags are a parody and unlikely to mislead purchasers into thinking that Louis Vuitton sponsors or otherwise approves of the My Other Bag totes. See Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 16-241-cv (2nd Cir., Dec. 22, 2016) affirming Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 156 F.Supp.3d 425 (S.D.N.Y. 2016). The decision, which the court issued on December 22, 2016, reminds us of the limitations on the rights of famous mark holders and provides guidance to newcomers on how to successfully benefit from the parody defense.

Background

My Other Bags produces and sells inexpensive canvas tote bags that depict on one side, caricature drawings of various iconic designer handbags (including Louis Vuitton, Chanel and Fendi), and on the other side bear the inscription "My Other Bag" in large font. For the images of Louis Vuitton bags, My Other Bag replaces the interlocking "L" and "Vs" of genuine Louis Vuitton handbags with interlocking "M," "O" and "Bs." My Other Bag advertises the totes as "eco-friendly, sustainable tote bags playfully parodying the designer bags we love, but practical enough for everyday life." Purchasers of My Other Bags can use the totes at the gym, beach or for grocery shopping, a marked contrast from how consumers might use the more expensive Louis Vuitton handbags. According to the founder's deposition testimony, she chose the "My Other Bag" moniker to evoke the well-known bumper stickers that drivers of inexpensive cars place on their bumpers that jokingly state "my other car is a Mercedes" or another luxury car. Louis Vuitton was not amused and filed suit in 2014 claiming that the inexpensive totes were diluting its famous mark, and infringing its trademarks and copyrights.

District Court Decision

On summary judgment, the district court rejected all of Louis Vuitton's claims and spent a good portion of its opinion on My Other Bag's parody defense to Louis Vuitton's dilution claim. Courts have defined parody as a work that (1) references the original or famous brand, (2) but makes clear that the work is not the original, famous brand, and (3) communicates some articulable element of satire, ridicule, joking, or amusement. See Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ'g Grp., Inc., 886 F.2d 490, 494 (2d Cir. 1989); Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 260 (4th Cir. 2007).

Specifically, the district court rejected Louis Vuitton's argument that "trademark death can occur by a thousand cuts..." and that My Other Bag diluted its famous marks by intentionally designing its totes to evoke Louis Vuitton trademarks to create an association with Louis Vuitton. Although the totes' designer chose to reference Louis Vuitton because its marks are "iconic" and immediately recognizable, the court looked to the Fourth Circuit's reasoning in the "Chewy Vuitton" case — a case that Louis Vuitton also lost — which found that "parody is a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark's owner." Louis Vuitton Malletier S.A. v. Haute Diggity Dog, 507 F.3d 252 (4th Cir. 2007) (dismissing Louis Vuitton's trademark dilution claims against a doggie chew toy that allegedly used the Louis Vuitton mark because the use was a parody).

Here, My Other Bag's representation of the Louis Vuitton trademarks was sufficiently juxtaposed to the original so that the court concluded "as a matter of law that MOB's bags are protected as ... parody." The caricatured drawings, even though they mimicked Louis Vuitton's trademarks, did not copy them and the invocation of the joke "my other car" by the phrase "my other bag" made clear that the totes are not made by or affiliated with Louis Vuitton. The district court also rejected Louis Vuitton's argument that My Other Bag's totes were not a parody of Louis Vuitton but a broader social commentary and were therefore not parody: "The fact that MOB's totes convey a message about more than just Louis Vuitton bags is not fatal to a parody defense." Moreover, the court noted, "... the fact that Louis Vuitton at least does not find the comparison funny is immaterial; Louis Vuitton's sense of humor (or lack thereof) does not delineate the parameters of its rights (or MOB's rights) under trademark law."

Following much of the same reasoning, the court also rejected Louis Vuitton's infringement claim. In the context of a parody defense, the fact that Louis Vuitton's marks were admittedly strong made confusion less likely. The question of proximity of the products favored My Other Bag for a number of reasons, including because of the stark price differential between the products. Nor did similarity of the marks help Louis Vuitton given the cartoon-like image, presence of "my other bag" text and utility of the allegedly infringing tote. In the end, the court found that the overall impression of the totes was such that no reasonably prudent customer would think that Louis Vuitton sponsored or otherwise approved of My Other Bag totes.

Finally, the district court rejected Louis Vuitton's copyright claims. Among the reasons cited was that My Other Bag's "invocation of the 'my other car trope'" made clear that the canvas totes were not replacements for Louis Vuitton's expensive, luxury handbags.

Louis Vuitton's Appeal to the Second Circuit

On appeal, the case drew media attention when one of the panel judges laughed out loud at some of the positions Louis Vuitton's counsel advanced during oral argument and wondered why Louis Vuitton could not take a joke. The Second Circuit's short December 22 opinion was similarly dismissive. In it, the court emphasized that "the fact that the joke on LV's luxury image is gentle, and possibly even complimentary to LV, does not preclude it from being a parody" and that the entire point of My Other Bag's "plebian product" was to parody Louis Vuitton's luxury image. It further stressed that the inclusion of the name My Other Bag on each tote was undisputedly a designation of source that foreclosed a dilution claim and rendered confusion unlikely.

Loss for Louis Vuitton Could Also Be a Win, But One Thing Hasn't Changed: Parody Cannot Be Registered

The district court's opinion, together with the Second Circuit's order affirming it, reemphasizes the proposition that trademark and brand owners cannot prevent all references to their brand they find objectionable. Indeed, aggressive enforcement campaigns can serve to draw attention to the very uses that brand owners dislike rather than shut them down. On the other hand, this loss, especially coupled with Louis Vuitton's loss on similar issues in Chewy Vuitton demonstrates that at least this brand owner is willing to go the distance, litigating through appeal, even in difficult cases. Newcomers facing a challenge from such litigants may be incentivized to change their mark rather than fight and incur the expense of litigation, especially those with arguably weaker defenses than My Other Bag had. Thus, in some ways, this loss is a win for Louis Vuitton if it has a deterrent effect on market entrants. As a practical matter, companies considering selling a product that might require a parody defense in a later litigation should consider incorporating a clear source-designating reference like My Other Bag did here: the presence of the phrase "my other bag" on each tote served as a source designator as distinct from the object of its parody, Louis Vuitton.

While this opinion reiterates that parody can be a successful defense to a dilution claim in litigation, it does not change the rule that parody cannot be used to designate the origin of a product or service for registration purposes. Indeed, the applicable statute (subsection 43(c)(3)) of the Lanham Act) renders parody a defense but does not create independent trademark rights. Thus, while companies and individuals can use a parody of another's mark, they still may not register that parody as trademark. See New York Yankees Partnership v. IET Products and Services, Inc., 2015 TTAB LEXIS 96 (2015).

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