LV Infringement Claims Against Parody Totes Rejected

Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...

By Peter Leung

Jan. 7 — Luxury brand Louis Vuitton Malletier S.A.'s claims against canvas tote maker My Other Bag Inc. were thrown out by the U.S. District Court for the Southern District of New York in a Jan. 6 opinion, even though the defendant admitted that its products were designed to “evoke” the fashion house's marks.

LV brought trademark dilution claims under New York and federal law, and trademark and copyright infringement claims under federal law, against the defendant, who makes canvas totes that say “My Other Bag ...” on one side and have drawings evoking well-known designer bags on the other. Several of MOB's tote designs allude to LV bags.

(Click image to enlarge.)

LV infringement claims article 1/8/2016

Both parties filed for summary judgment. MOB moved on all three claims, while LV moved on the dilution and copyright claims.

The court granted MOB's motion. Applying the summary judgment standard, it found that the suit would not prevail even if all disputes of fact were construed in the non-moving plaintiff's favor, in large part because the defendant's use is intended to be humorous rather than to ride on the plaintiff's reputation.

‘[Louis Vuitton] is perhaps unfamiliar with the ‘my other car' trope. Or maybe it just cannot take a joke,” the court wrote.

No Likelihood of Confusion

LV's trademark infringement claims failed because there was no requisite likelihood of confusion between the marks, even though the defendant's bags were admittedly meant to evoke plaintiff's brand.

The court found that the eight-factor test for likelihood of confusion articulated in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 128 U.S.P.Q. (BNA) 411, 4 Fed.R.Serv.2d (Callaghan) 81 (2d Cir. 1961) weighed strongly in the defendant's favor.

Applying the factors, the court explained that though LV's brand has a strong reputation, the two marks were not very similar given the context of MOB's use, including its “cartoonish” nature and the fact that the drawings accompanied the defendant's company name in large letters.

Furthermore, the court wrote that the next two factors—the proximity of the products and whether the gap between them can be “bridged”—also favor MOB. Plaintiff's bags are high-end luxury products sold only in its own stores or on its website, while the defendant's products cost around $50 and aren't sold in the same outlets as LVs, so there is no competition between them.

Similarly, the court found that there was no evidence of actual consumer confusion.

It also ruled that there was no bad faith, even though the plaintiff admittedly intended to invoke the Louis Vuitton brand. This, however, was not an attempt to ride on Louis Vuitton's goodwill but, rather, to amuse through humor.

Fair Use Defeats Dilution and Copyright Claims

LV was similarly unsuccessful on its trademark dilution claims, which are sometimes seen as easier to establish than infringement because no likelihood of confusion is necessary. The court found that the plaintiff's dilution by blurring claim—that MOB's use of its famous mark reduces the public's perception that it is unique and singular— is barred as a matter of law because the defendant's use is parody and, thus, fair use. Similar to its reasoning about product similarity and bad faith in the trademark infringement context, the court found that the defendant's products were meant to be a humorous comment on LV's products. The totes' playful look, in contrast to the plaintiff's reputation for refinement, also weighed in MOB's favor.

“Indeed, the whole point is to play on the well-known ‘my other car . . .' joke by playfully suggesting that the carrier's ‘other bag'— that is, not the bag that he or she is carrying — is a Louis Vuitton bag,” the court wrote.

Furthermore, the court wrote that even if there was no fair use, the trademark dilution claim still fails because MOB's totes in no way blur and diminish LV's marks. If anything, the court explained, the fact that LV's brand is so well-known makes it less likely that the defendant's use would impair its distinctiveness.

Along the same line of reasoning, the court held that, as a matter of law, the copyright infringement claims fail because MOB's bags are protected by fair use. Characterizing the analysis as “awkward” because LV is attempting to shoehorn a trademark claim into copyright law, it found that, given that the defendant's products are parody and not substitutes for actual LV bags, they fall squarely within fair use.

To contact the reporter on this story: Peter Leung in Washington at pleung@bna.com

To contact the editor responsible for this story: Mike Wilczek in Washington at mwilczek@bna.com

For More Information 
The decision text is available at: http://src.bna.com/bUg.