United States: Second Circuit Upholds Parody Defense, Tosses Louis Vuitton's Trademark Suit

In late December, the Second Circuit issued a ruling in Louis Vuitton Malletier, S.A., v. My Other Bag, Inc., affirming the district court's grant of summary judgment for claims of trademark infringement and dilution of a famous mark in favor of My Other Bag ("MOB"), a maker of canvas totes with graphic images depicting Louis Vuitton ("LV") and other famous designer handbags.

MOB was started by self-professed "designer handbag junkie" Tara Martin of Los Angeles and advertises its tote bags as "playfully parodying the designer bags we love, but practical enough for everyday life." The bags say "My Other Bag..." on one side and display a screen-print image of one of a number of iconic designer bags on the other, including well-known details such as the LV's trademark Toile Monogram print. The totes sell for between $35 and $55.

The appellate court held that "obvious differences in MOB's mimicking of LV's mark, the lack of market proximity between the products at issue, and minimal, unconvincing evidence of consumer confusion compel a judgment in favor of MOB" on the trademark infringement claim. The three-judge panel affirmed the analysis of District Judge Jesse M. Furman, who noted that the MOB concept is a play on the "my other car" novelty bumper sticker genre, and concluded that "MOB's totes are just as obviously a joke, and one does not necessarily need to be familiar with the 'my other car' trope to get the joke or to get the fact that the totes are meant to be taken in jest."

Judge Furman distinguished this case from an unpublished opinion in Louis Vuitton Malletier, S.A. v. Hyundai Motor America (2012 WL 1022247 (S.D.N.Y. Mar. 22, 2012)), a case concerning a television commercial aired by Hyundai. The commercial included a four-second scene featuring a basketball game played on a lavish marble court with a gold hoop and a basketball bearing marks meant to evoke the LV Toile Monogram print. In that case, the same district court rejected Hyundai's parody defense because testimony established that the car company had no intention for the commercial to make any statement about LV or its products. Thus, the court concluded that Hyundai had disclaimed any intention to parody, criticize or comment upon LV. Here, by contrast, Judge Furman found that LV's handbags are an integral part of the joke that gives rise to the name "My Other Bag" and the fact that MOB's totes convey a message about more than just LV bags is not fatal to a successful parody defense.

On the trademark dilution claim, the appellate court likewise agreed that the use of the marks on MOB's bags was parodic and falls within the "fair use" exclusion from dilution liability established under the Lanham Act. The panel noted that while the totes "mimic LV's designs and handbags in a way that is recognizable, they do so as a drawing on a product that is such a conscious departure from LV's image of luxury—in combination with the slogan 'My other bag'—as to convey that MOB's tote bags are not LV handbags." The panel also noted that the "gentle" and potentially complimentary nature of MOB's caricature is not a bar to a finding of parody. Moreover, in concluding that MOB did not use LV's marks as a designation of source, the panel drew on the larger context for MOB's use of the LV marks, namely its use of graphics depicting other luxury-brand handbags, not just LV's, and the presence of "My Other Bag..." in conjunction with those graphics.

The panel distinguished those cases cited by LV in support of its claim, finding that in those cases the trademarks were not used with intent to parody, but were instead used merely to "promote" or "sell" goods and services, which is impermissible. Namely, in Starbucks Corp.  v.  Wolfe's Borough Coffee, Inc., the Second Circuit held that a coffee brewer's use of the term "Charbucks" to identify a dark roast coffee did not rise above "subtle parody" and was instead "a beacon to identify Charbucks as a coffee that competes at the same level and quality as Starbucks in producing dark-roasted coffees." 588 F.3d 97, 113 (2d Cir. 2009). Similarly, in Harley Davidson, Inc. v. Grottanelli, the court found that a motorcycle repair shop owner's use of the Harley Davidson bar-and-shield logo created no comment on that mark and was simply used to promote his own products and services, even if that use was "somewhat humorous." 164 F.3d 806, 813 (2d Cir. 1999).

The Second Circuit's decision expands on the parody defense principles established in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, where the Fourth Circuit found a "Chewy Vuiton" dog toy to be a successful parody of the LOUIS VUITTON mark and the designer's famous trade dress. In finding that consumer confusion was not likely and that the use was not likely to impair the distinctiveness of LV's famous marks, the Fourth Circuit noted the differences in the parodic product from the original—the term "Chewy Vuiton" and the use of "CV" in the monogram print—as well as the differences in products and channels of trade.

Here, while the price point and quality of the products may be different, both companies offer handbags for sale. Moreover, the evidence strongly suggested that the customers for the respective products will be identical, namely, those consumers who admire or covet luxury handbags. Accordingly, this ruling suggests that when a product makes a clear and obvious commentary on another product, a finding of parody may be found even when the traditional indices of likelihood of confusion are present, and even when the parody is made in admiration of—rather than critical to—the original product.

Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Morrison & Foerster LLP. All rights reserved

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