By Thomas Long, J.D.
A seller of canvas tote bags with the text “My Other Bag …” on one side and a drawing meant to evoke the iconic handbags produced by luxury designer Louis Vuitton Malletier, S.A., on the other side engaged in fair use of Louis Vuitton’s trademarks and copyrighted design, the federal district court in New York City has determined. In addition, the parodic nature of the tote bags made consumer confusion unlikely. Accordingly, Louis Vuitton could not go forward with trademark dilution, trademark infringement, and copyright infringement claims (Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., January 6, 2016, Furman, J.).
The tote bags produced by My Other Bag, Inc. (MOB) were inspired by novelty bumper stickers that can sometimes be seen on inexpensive cars, proclaiming that “my other car” is a luxury car, such as a Mercedes. MOB’s bags featured drawings that parodied the designs of various luxury handbags, including those by Louis Vuitton, Chanel, and Fendi. On the other side of the plain, inexpensive canvas tote bags, the words “My Other Bag …” were displayed in large print, conveying the humorous message that the owner’s “other bag” was a luxury handbag.
World-renowned for its high-quality handbags and other luxury items, Louis Vuitton had expended large sums in cultivating the fame of its designs and trademarks. Several of its marks had become icons of wealth and expensive taste, especially its Toile Monogram design, which consisted of a repeating pattern featuring the interlocking, stylized letters “L” and “V” and three stylized flower designs. MOB’s handbags parodying Louis Vuitton’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 Louis Vuitton bag.
Louis Vuitton 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. MOB moved for summary judgment, contending that it had engaged in fair use and that its parody handbags were not likely to dilute Louis Vuitton’s marks or to cause consumer confusion.
According to Louis Vuitton, MOB’s parody handbags were likely to “blur” Louis Vuitton’s famous marks; that is, they were likely to diminish the public’s perception that the marks signified something unique, singular, or particular.
Fair use—parody. Federal law provided that certain “fair uses” of a mark were not actionable as dilution by blurring, including a parody of the famous mark at issue. In the court’s view, MOB’s bags were protected as fair use because they constituted a parody of Louis Vuitton’s image as a designer of luxury goods. The whole point of the use of Louis Vuitton’s marks was to playfully suggest that the carrier’s other bag—not the bag that he or she was carrying—was a Louis Vuitton bag. That joke, combined with the cartoonish renderings of Louis Vuitton bags on the totes, built significant distance between MOB’s inexpensive “workhorse” totes and the expensive handbags they were meant to humorously evoke.
Dilution by blurring. Even if MOB’s use of the marks did not qualify as fair use as a matter of law, the dilution claims under both New York and federal law failed because MOB’s bags were not likely to impair the distinctiveness of Louis Vuitton’s marks, the court said. Although MOB deliberately evoked Louis Vuitton’s marks, it conveyed the simultaneous message that it was not in fact a source of Louis Vuitton products.
It was undisputed that Louis Vuitton’s marks were famous, which ordinarily weighed in favor of a finding of likelihood of confusion. However, in this case, the opposite was true as a result of MOB’s parodic use. The strength and recognizability of Louis Vuitton’s marks made it easier for consumers to understand the target of MOB’s joke and to appreciate the obvious changes to the marks that made the parody funny.
While there were intentional similarities between the bag-within-a-bag depicted on MOB’s tote bags and Louis Vuitton’s marks, there were obvious differences as well, the court said. The context and setting of the mark use in this case delivered the message that it was a joke and not the real thing. Therefore, confusion as to source or connection was unlikely.
In addition, MOB and Louis Vuitton sold their products in different markets to different classes of consumers, and Louis Vuitton was unlikely to “bridge the gap” into the market for lower-priced parody tote bags. There was no persuasive evidence of actual confusion, and MOB’s intent to parody Louis Vuitton’s marks did not indicate that it acted with a bad faith intent to deceive consumers or to free-ride on Louis Vuitton’s goodwill. MOB’s intent was to amuse, not confuse.
Any use by MOB of copyrightable elements of Louis Vuitton’s prints qualified as a matter of law as fair use for purposes of Section 107 of the Copyright Act, the court held. MOB’s use of Louis Vuitton’s patterns was reasonable in relation to the parodic purpose of the use, and MOB’s totes would not serve as a market replacement for Louis Vuitton’s handbags. Therefore, MOB’s motion for summary judgment was granted.
The case is No. 14-CV-3419 (JMF).
Attorneys: Jonathan Daniel Lupkin (Lupkin & Associates PLLC) and Owen Harris Smith (Barack Ferrazzano Kirschbaum & Nagelberg LLP) for Louis Vuitton Malletier, S.A. Brian J. Philpott (Koppel, Patrick, Heybl & Philpott) for My Other Bag, Inc.
Companies: My Other Bag, Inc.
MainStory: TopStory Copyright Trademark NewYorkNews
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