Louis Vuitton v My Other Bag: sometimes it is better to have a laugh than to file a claim.

by cristinaberra

Louis Vuitton has recently been famous not only for its high-quality luxury goods but also for its aggressiveness in trying to protect its IP rights. Yet, it seems all its efforts are unsuccessful when opposed – again – by parody counterclaims.

On January 6th 2016, the Southern District of New York Court rejected Louis Vuitton’s claims of trademark dilution, trademark infringement and copyright infringement, ruling in favour of the defendant My Other Bag (M.O.B.), a US company which manufactures and sells canvas tote bags that evoke iconic handbags made from luxury designers (the full decision can be found here).

The case was brought before the Court because of various M.O.B.’s bags displaying caricatures of Louis Vuitton’s luxury handbags.

Maybe reassured by Haute Diggity Dog case’s outcome[1], M.O.B.’s defence was essentially based on parody. The defendant, in fact, defined its products as “eco-friendly, sustainable tote bags, playfully parodying the designer bags we love, but practical enough for everyday life”.[2]

According to the definition given by the US Courts, a successful 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. 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”.[3]

On the basis of the facts and the given definition of parody, Judge Jesse M. Furman could not but totally agree with M.O.B.’s argument, finding that the defendant’s products represent a funny joke created on the comparison between cheap canvas bags and the luxury aura of Louis Vuitton brand. Accordingly, the Court strongly rejected Vuitton’s claims.

Firstly, addressing the trademark dilution issue, the Court found that, on the basis of the overall design of the canvas bags (the product clearly displays the company’s mark “My other bag…” on one of its sides), M.O.B.’s use of the famous Louis Vuitton marks does not constitute a designation of source and therefore has to be considered fair use under 15 U.S.C. §1125 (c) (3). Nevertheless, Judge Furman held that Louis Vuitton’s dilution claim would have been rejected even if M.O.B. had failed to meet the requirements of fair use. In fact, dilution by blurring occurs when the unauthorised use of a well-known mark impairs its distinctiveness in the consumers’ perception. It is self-evident in the case at hand that, being M.O.B.’s use an obvious parody, it does not threat the uniqueness of the mark, rather it reinforces and enhances its notoriety in the eye of the public.

Secondly, the Court rejected the trademark infringement claim. Applying Polaroid Corp. v. Polarad Elecs. Corp. Case’s factors[4], the Judge held that M.O.B.’s use does not create a likelihood of confusion as to the source of the products. Conversely, being the parody so clear, it is undoubtedly perceived as such by the consumers.

Lastly, the Court addressed the copyright infringement claim, emphasising again on the parody intent and holding that any use made by M.O.B. of copyrighted elements of Louis Vuitton’s signs would be permitted by the fair use doctrine.

In his conclusion, Judge Furman suggested that, “in some cases, […] it is better to ‘accept the implied compliment in [a] parody’ and to smile or laugh than it is to sue.”[5]

It seems, however, that Louis Vuitton is not taking the advice, as it has already filed an appeal against the decision.

Cristina Berra

Assistant Editor, QMJIP

[1] Louis Vuitton Malletier S.A. v. Haute Diggity Dog, 507 F.3d 252 (4th Cir. 2007)

[2] Louis Vuitton Malletier S.A. v My Other Bag Inc, 1:14-cv-034, pag. 3

[3] Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ. Group, Inc., 886 F.2d 490, 494 (2nd Cir. 1989).

[4] Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir. 1961)

[5] Louis Vuitton Malletier S.A. v My Other Bag Inc, 1:14-cv-034, pag. 28