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By Tony Dutra
Louis Vuitton Malletier S.A. asked the Supreme Court to overturn a ruling that My Other Bag Inc.’s mimicking of the fashion house’s famous interlocking logo is a parody not subject to a trademark dilution charge ( Louis Vuitton Malletier, S.A. v. My Other Bag, Inc. , U.S., No. 17-72, review requested 7/13/17 ).
Louis Vuitton relied on the Trademark Dilution Revision Act, which allows owners of famous marks to charge dilution by another company whose lower quality products diminish the value of famous mark if consumers make an association between the two. The TDRA gives the defendant a fair-use defense if its use is a parody of the famous mark.
The July 13 petition for high court review challenged the U.S. Court of Appeals for the Second Circuit’s “novel conception of parody” that doesn’t require the copier to at least communicate a joke about the famous mark. All makers of knock-offs of famous products will be emboldened unless the Supreme Court reverses that decision, Louis Vuitton said.
Louis Vuitton is in the unusual situation of asking the high court to resolve a conflict between two appellate courts, both of which ruled against the French fashion house. The company essentially now supports the view of parody by the Fourth Circuit in 2007 in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC.
The Fourth Circuit held that use of “Chewy Vuitton” on a plush pet chew toy was parody. But the court put considerable weight on the immediately obvious differences between the products, according to Louis Vuitton’s petition. In contrast, My Other Bag is selling the same product, Louis Vuitton said.
The charged handbags have the look-alike presentation—the same color and pattern but with interlocking “MOB” instead of “LV"—on one side and the phrase “My Other Bag” on the other side. The Second Circuit held that the joke might be “ gentle, and possibly even complimentary” to Louis Vuitton, and that was enough to satisfy the fair-use exclusion to an injunction for dilution under 17 U.S.C. §1125(c)(3).
But the bags are designed to be worn with “My Other Bag” toward the body, according to the petition, so “the crux of the purported joke” is not even visible to other viewers. The bag is not conveying a joke, it said. It is a clear intent “to free-ride on the fame and distinctiveness of Louis Vuitton’s marks to sell its own handbags.
The petition also charged both appellate courts with using the test for parody that applies to infringement charges, when Congress clearly intended a different approach with parody in the context of dilution. Finally, Louis Vuitton defended against a possible argument that its preferred test would run up against First Amendment concerns. Parties with an “expressive purpose” in their alleged parody or commentary can rely on the First Amendment’s protections, it said. But My Other Bag has no such purpose and only intends to capitalize on the famous mark’s fame, it said.
Theodore B. Olson of Gibson, Dunn & Crutcher LLP, Washington, filed the petition. A response is due Aug. 14. Miller Korzenik Sommers Rayman LLP, New York, represented My Other Bag before the Second Circuit.
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