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.


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).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
18 Oct 2017, Conference, California, United States

This three-day program will focus on the tax issues presented by the entire spectrum of modern major corporate transactions, from relatively simple single-buyer acquisitions of a division or subsidiary to multi-party joint ventures, cross-border mergers, and complex acquisitions of public companies with domestic and foreign operations, including spin-offs and other dispositions of unwanted operations.

19 Oct 2017, Conference, California, United States

Privacy professionals are facing a number of challenges in determining how best to achieve GDPR compliance and maintain compliance for the long term. The Alliance of Global Privacy Solution Providers (the "Alliance") has been formed with a mandate to educate privacy professionals on making informed decisions on their approach to planning, implementing and managing GDPR and long-term privacy compliance.

30 Oct 2017, Seminar, California, United States

This program will address some of the hottest legal and policy topics that online platforms have brought to the fore: free speech, hate speech, fake news, privacy and surveillance, artificial intelligence, augmented reality, changing notions of “ownership” of information and software-enabled consumer products, and the perennial issue of copyright.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.