United States: Being your Best Brand: A Lesson from the Luxury Market

This article originally was published in the 4Q2017 edition of the ACC Baltimore Focus newsletter.

Becoming, and staying, a great brand is rife with challenges and the need to protect and enforce a brand is never ending. This is especially true in the luxury world, where brands are constantly challenged by counterfeit products and parodies. The recent high-profile case of Louis Vuitton Malletier S.A. v. My Other Bag Inc. is a clear example, pitting the well-known fashion house against a rising upstart.

Louis Vuitton Malletier S.A. ("LV") sells highly recognizable luxury handbags that sell for hundreds, even thousands of dollars. LV is known for its bag designs, which are protected by trade dress, including its Toile Monogram, a distinctive brown and tan pattern. In contrast, My Other Bag, Inc. ("MOB"), makes ecofriendly canvas tote bags with a designer twist; the company's name and brand concept is an overt jab at established luxury brands, riffing off of the comic bumper stickers seen on beat-up cars that claim, "My other car is a" – fill in the blank with a luxury brand like Mercedes or Porsche. Similarly, one side of MOB's bags, has large, stylized script proclaiming "My Other Bag..." while the reverse side displays a cartoon image of a luxury handbag from various famous fashion houses including LV, Chanel, Celine, and Hermes. MOB uses similar patterns and designs to evoke the luxury bags, though selling at $30-$50, a fraction of the cost.

MOB plays up the idea that instead of using high-priced designer bags to carry dirty gym clothes and groceries, their bags "playfully parod[y] the designer bags we love, but [are]practical enough for everyday life."

Not everyone, however, found the designs playful.

In 2014, LV took MOB to court, filing a complaint in the US District Court for the Southern District of New York alleging trademark infringement of its distinctive trademarks and trade dress, dilution by blurring, and copyright infringement. With regards to the dilution claim, MOB argued the defense of fair use, specifically that use of the LV marks on its bags constitutes parody. The court agreed, finding in favor of MOB on summary judgment.

"Louis Vuitton Malletier, S.A., the maker of Louis Vuitton bags, is perhaps unfamiliar with the 'my other car' trope. Or maybe it just cannot take a joke."

Successful parody communicates to a consumer that an entity, separate and distinct from the trademark owner, is poking fun at a trademark or the policies of its owner. The MOB bag indicates that the LV bag is not the bag the consumer is carrying and creates significant distance between MOB totes and real LV handbags. Real LV handbags, MOB suggests, represent luxury and carefully cultivated exclusivity and refinery. The Court agreed.

LV argued the totes are a parody of something, but not a parody of its handbags so the argument should fail. There is evidence that MOB never intended to disparage LV, and that the bags represent a larger social commentary and humor. The Court concluded that LV takes too narrow a view of what can qualify as parody. The humor comes from the combination of the workhorse canvas bag and the wording and images that comment on society's larger obsession with status symbols and the showy status the LV bags symbolize.

According to the Court, the fact that the totes carry a message about more than just LV is not fatal to a successful parody defense. LV also argued that MOB doesn't need LV's trademarks to convey the parody, but the Court disagreed, ruling that MOB bags wouldn't make their point and wouldn't be funny if they depicted some generic handbag instead of the LV bag. Put another way, "my other bag...is some other bag" isn't much of a punchline. The Court ruled in favor of MOB granting summary judgment on all counts.

LV appealed only to have the US Court of Appeals for the Second Circuit affirm the lower court's decision. In its short opinion issued on December 22, 2016, the Court focused on MOB's parody defense to dilution and reiterated the standard – that parody must convey two simultaneous and contradictory messages: a) that it is the original and b) that it is also not the original but is instead a parody. The Court held that MOB bags do just that – they mimic the LV designs and handbags in a way that is recognizable, but as a drawing on a product that is a conscious departure from LV's image of luxury. The use of "My Other Bag..." on the totes makes clear that it isn't a LV bag, the Court stated. Further, the Court continued, the joke isn't specifically on LV, but on the luxury that LV evokes. This larger social commentary isn't fatal to the parody defense, nor is the fact that evidence supports that MOB never intended to disparage LV. The Court stated that even though the joke on LV is "gentle and complimentary" to LV, that fact does not preclude the bags from being a parody. The Court ruled in favor of MOB that MOB does not infringe LV's trademarks; that MOB's parody defense shields it from LV's dilution claim; and that MOB's parodic use of LV's designs constitutes transformative use in defense of LV's copyright infringement claim.

In July, LV petitioned the US Supreme Court for writ of certiorari, arguing the case had "far-reaching significance for countless owners of famous and distinctive marks that, like Louis Vuitton, depend on the protections of [the federal trademark dilution statute] to safeguard their intellectual property against improper dilutive uses." LV posited that the decision by the Second Circuit left famous mark owners vulnerable to widespread dilution through the production of imitation products marketed under the guise of "parody."

LV further argued that the Second Circuit's interpretation of parody creates uncertainty for all owners of famous marks who are confronted with divergent parody tests depending on the matter's jurisdiction. Specifically, that the Fourth Circuit applies a different test for parody than the Second, creating a circuit split. LV asked the Supreme Court to announce a nationally uniform parody test.

Further, LV propounded that the Second Circuit vastly expanded the fair use exception beyond the narrow bounds Congress intended when it defined parody to include those that are "gentle and complimentary." This, LV claimed, leaves famous marks vulnerable to widespread dilution through the production of imitation products marketed under the guise of parody. Products that are designed to appeal to fans of the parodied products rather than to comment on, criticize, or make fun of those products, present the harm the Trademark Dilution Revision Act was designed to prevent and leads to loss of distinctiveness of the brand.

In response, MOB argued the Second Circuit's decision did not create uncertainty, that the Fourth Circuit applied the same legal standard to a different set of facts, and that the non-precedential decision is firmly in line with prior parody cases.

Finally, on October 2, 2017, the petition for writ of certiorari was denied. The Second Circuit decision was upheld, and MOB's use of similar LV trademarks and trade dress on its canvas bags can continue.

This case is illustrative of the types of challenges that companies face in their brand protection journey. Decisions need to be made, often daily, about when to enforce a trademark and when to stand down. As the District Court noted, in some cases, it is better to "accept the implied compliment in a parody and to smile or laugh than it is to sue." Whether LV amends its aggressive enforcement strategy and follows this advice remains to be seen. For now, LV fans continue to have choice as to which bag they take to the gym and farmer's market—the real LV, or their "other" bag.

Julie A. Hopkins focuses her practice on trademark prosecution, registration and enforcement in the United States and worldwide, including searching and clearance of brand names, logos, slogans, and trade dress.

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.

In association with
Related Topics
Related Articles
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
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions