By Peter Reap, J.D., LL.M.
Louis Vuitton Malletier ("LV"), the luxury designer and seller of high-end handbags, could not prevail on its claim that My Other Bag ("MOB"), infringed LV’s trademarks by selling canvas tote bags with the text "My Other Bag …" on one side and a drawing meant to evoke the iconic LV handbags on the other side because the federal district court in New York City correctly determined that there was no likelihood of confusion between LV’s and MOB’s products, the U.S. Court of Appeals in New York City has ruled. Furthermore, the lower court did not err in ruling against LV on its trademark dilution claims—finding that MOB was entitled to a fair-use dilution defense—and on LV’s copyright infringement claim, also based on fair use. Thus, the judgment of the district court was affirmed (Louis Vuitton Malletier, S.A. v. My Other Bag, Inc. , December 22, 2016, per curiam).
World-renowned for its high-quality handbags and other luxury items, several of LV’s marks have become icons of wealth and expensive taste, especially its Toile Monogram design, which consists of a repeating pattern featuring the interlocking, stylized letters "L" and "V" and three stylized flower designs. MOB’s handbags parodying LV’s design used the letters "MOB" instead of "LV," in a similar pattern to the Toile Monogram design, on a cartoonish picture of a handbag that roughly resembled a LV bag. LV filed suit against MOB, asserting claims for trademark dilution in violation of New York and federal law, trademark infringement in violation of federal law, and copyright infringement. The district court ruled in favor of MOB on all claims.
Trademark infringement. LV argued on appeal that the district court ignored or discounted favorable record evidence during its application of the non-exclusive, eight-factor Polaroid balancing test, and thereby wrongly concluded that there was no likelihood of consumer confusion between LV’s and MOB’s products. This argument failed because the Second Circuit reached the same conclusion as the district court. Specifically, 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 compelled a judgment in favor of MOB on LV’s trademark infringement claim, the court reasoned.
Trademark dilution. LV argued that the district court erred in finding as a matter of law that the use of its marks on MOB’s tote bags was parodic, bringing it within the "fair use" exclusion from dilution liability. See 15 U.S.C. § 1125(c)(3).
"A parody must convey two simultaneous—and contradictory—messages: that it is the original, but also that it is not the original and is instead a parody," the court observed. Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 503 (2d Cir. 1996). MOB’s bags do precisely that, the appellate court held.
At the same time that they mimicked LV’s designs and handbags in a way that was recognizable, they did so as a drawing on a product that was 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 were not LV handbags. The fact that the joke on LV’s luxury image was gentle, and possibly even complimentary to LV, did not preclude it from being a parody.
LV nevertheless contended that MOB was not entitled to a fair-use dilution defense because MOB uses LV’s marks as a "designation of source." 15 U.S.C. 1125(c)(3)(A). The district court, however, determined that the testimony of MOB’s CEO, upon which LV principally relied to support this argument, unambiguously referred to likelihood of consumer confusion, not the designation of source. In any event, the nature of MOB’s business—it sells quite ordinary tote bags with drawings of various luxury-brand handbags, not just LV’s, printed thereon—and the presence of "My Other bag," an undisputed designation of source, on one side of each bag, independently supported summary judgment for MOB on this designation-of-source issue, according to the court.
Copyright infringement. MOB’s parodic use of LV’s designs produces a "new expression [and] message" that constitutes transformative use, according to the Second Circuit. Campbell v. Acuff–Rose Music, Inc., 510 U.S. at 579. Moreover, the remaining fair-use factors either weighed in MOB’s favor or were irrelevant, the court said.
The case is No. 16-241-cv.
Attorneys: Robert D. Shapiro (Barack Ferrazzano Kirschbaum & Nagelberg LLP) for Louis Vuitton Malletier, S.A. David S. Korzenik (Miller Korzenik Sommers Rayman LLP) for My Other Bag, Inc.
Companies: Louis Vuitton Malletier, S.A.; My Other Bag, Inc.
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