On December 22, 2016, the Second Circuit Court of Appeals affirmed the decision of the Southern District Court of New York in Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., a trademark infringement case in which summary judgment was granted to defendant My Other Bag (MOB) on the basis that their product – a cheap canvas bag that features a cartoonish depiction of plaintiff Louis Vuitton’s (LV) marks – satisfies the elements of a parody defense and is therefore unlikely to cause confusion despite surface-level similarities.
The outcome of the case in favor of the defendant represents a big win for defendants in trademark infringement suits making use of the parody defense – in particular, for those defendants making use of the parody defense to target a famous trademark-holder.
Defendant MOB sells cheap canvas tote bags that feature cartoonish depictions of famous luxury handbag brands (including LV), interlocking gold letters representing the MOB brand (emulating the interlocking design used by plaintiff LV for their own handbags), and the phrase “My Other Bag is a…” on one side.
The phrase “My Other Bag is a…” is meant to be evocative of the popular “my other car is a…[insert luxury brand here]” bumper sticker. In essence, the phrase is intended to make light of an owner’s cheap product by projecting faux-insecurity regarding ownership of a superior luxury product.
Plaintiff LV asserted that defendant MOB’s canvas tote bag line diluted their famous trademark and infringed upon their various trademarks. The defendant argued that its use of the plaintiff’s marks on its tote bags was meant as parody and, therefore, comes under the “fair use” exception for trademark dilution.
History of Use
Plaintiff LV was founded in 1854 and is one of the world’s oldest and largest fashion brands. In the present case, it asserts its infringement claims on the basis of several famous trademarks: the interlocking letter design – known as the Toile Monogram – with the brand letters (‘L’ and ‘V’) strung together, and various iconic handbag designs and patterns (the Monogram Multicolore and the Damier), among others.
The Toile Monogram has been in the stream of commerce since 1896, and has three federally registered incontestable marks designed to protect individual design elements of it.
Defendant MOB was founded in 2011 as a novelty tote bag brand. MOB does not claim that it has used the marks at-issue for a longer period of time, or that it has valid registered marks, or even that LV’s marks are invalid or unenforceable. In the present case, defendant MOB concedes that it depicted imagery that was intended to evoke that of the “classic Louis Vuitton” designer handbag, but asserts that it was protected by the parody defense.
There are several notable outcomes from this case which are likely to have an effect on trademark holders, entities and individuals making use of the parody defense, and other relevant stakeholders.
In the present case, the Second Circuit found that the Southern District Court of New York did not err in finding – as a matter of law – that defendant MOB’s tote bags were a parody and fit within the bounds of “fair use.”
Juxtaposition of Trademarks Was Sufficient
The Second Circuit discussed the unique message that a parody product must be communicative to the market. Quoting Hormel Food Corp. v. Jim Henson Prods., Inc. (1996), they wrote, “A parody must convey two simultaneous—and contradictory—messages: that it is original, but also that it is not the original and is instead a parody.” The facts showed that MOB’s tote bags met this unique parody standard.
Specifically, the Court found that the juxtaposition of LV’s marks and their idealized image with MOB’s irreverent representation of said marks properly communicated the contradictory message required of effective parody: the parody accurately identifies the original mark but makes it clear that it is not, in fact, the original mark.
The Court also found that use of the phrase “My Other Bag is a…” was a designation of source that makes unambiguous the fact that MOB’s tote bag is not an LV-branded bag but merely a parody. The likelihood of consumer confusion is extremely low since the phrase necessarily designates the bag as having a non-LV source.
Broad Social Commentary Does Not Undermine a Parody Defense
The District Court rejected the plaintiff’s argument that defendant MOB’s tote bags presented a general social message and were therefore not parodic. The Court determined that a parody defense is not undermined by the existence of a broader social message, so long as the elements of parody are met by the case at-issue. The Second Circuit decision did not address this aspect of the District Court ruling.
Strong Trademarks and Market Separation Make Confusion Less Likely
Two aspects of LV’s trademarks made for a more straightforward parody case for defendant MOB: 1) the market separation between the products at-issue, and 2) LV’s strong trademarks.
There is a distinct market separation in the present case. Defendant MOB sells its tote bags for $30-$55, targeting the casualwear market segment (as well as the eco-conscious segment, as MOB bags are sustainably produced), while plaintiff LV sells its handbags for thousands of dollars, targeting the luxury and high fashion market segment. In fact, much of defendant’s marketing points out the various discrepancies (i.e., MOB’s website and ads point out that designer bags cannot be used for important daily activities like going to the gym, carrying groceries, etc.).
As plaintiff does not compete in the cheap, casualwear segment, consumer confusion from MOB’s bags was deemed likely to be minimal.
The fact that plaintiff LV’s trademarks are so strong and iconic as to be recognizable by the average consumer may have also hurt their claims and benefited the defendant’s parody defense – a reasonable consumer shopping for luxury handbags would almost certainly be aware of the various LV marks and would not be confused by defendant MOB’s parody. Had the plaintiff been a smaller, lesser-known brand, then there may have been a higher likelihood of confusion with the average consumer.
Parody Need Not Be Negative
Defendant MOB’s parody arguably shines a positive light on the LV brand, as it highlights the fact that LV handbags are “desirable” and “high-end.” MOB’s parody defense was not ruined by the fact that the parody could be seen as one in which the LV mark is presented positively, however.
Importantly, the Second Circuit found that the parody need not be obvious to the plaintiff, or negative. They wrote, “the fact that the joke on LV’s luxury image is gentle, and possibly even complimentary to LV, does not preclude it from being a parody.”
Ultimately, the Second Circuit affirmed the summary judgment on the federal trademark dilution claim. The Court wrote: “[T]he manifest parodic use here precludes the requisite finding that the market are substantially similar.”