Upscale brand Louis Vuitton was dealt a major blow in December in its two-year-old case against My Other Bag, a company that makes an eco-friendly line of canvas totes with prints of popular designer bags on them. Alongside designs mimicking Louis Vuitton’s famous monogram and checkerboard bags, My Other Bag features twists on bags by Kate Spade, Chanel and Hermés. The Second Circuit Court of Appeals affirmed the district court’s granting of a summary judgment in favor of My Other Bag, which had argued that the bags were a parody of designer ones and, therefore, protected under fair use. According to the Second Circuit, My Other Bag was a successful parody because it “communicates to a consumer that ‘an entity separate and distinct from the trademark owner is poking fun at a trademark or the policies of its owner.’ In other words, a parody clearly indicates to the ordinary observer ‘that the defendant is not connected in any way with the owner of the target.’”

We talked about the ruling in February last year and the District Court of the Southern District of New York’s opinion, which reprimanded Louis Vuitton for taking itself too seriously. “Louis Vuitton is, by its own description, an ‘active and aggressive’ enforcer of its trademark rights. In some cases, however, it is better to ‘accept the implied compliment in [a] parody’ and to smile or laugh than it is to sue,” Judge Jesse Furman, writing for the court, remarked at the time. “MOB’s use of Louis Vuitton’s marks in service of what is an obvious attempt at humor is not likely to cause confusion or the blurring of the distinctiveness of Louis Vuitton’s marks.”

Louis Vuitton, nonetheless, still didn’t appreciate the joke and appealed the summary judgment. The Second Circuit, in an opinion describing the district court’s decision as “thorough and well reasoned,” discussed the three major claims in Louis Vuitton’s complaint, trademark infringement, trademark dilution and copyright infringement, and reached the same conclusions.

Trademark Infringement

Louis Vuitton argued that the district court ignored evidence that was favorable to the brand during its likelihood of confusion analysis. The Second Circuit thought the most important considerations from the Polaroid factors, which are used by courts to determine the likelihood of confusion, were the obvious differences in My Other Bag mimicking Louis Vuitton’s mark, the lack of market proximity between the products, and unconvincing evidence of consumer confusion, and that they were all favorable to My Other Bag.

Trademark Dilution

Louis Vuitton believed that the district court made an error by finding that the bags were a parody. The Second Circuit disagreed. “At the same time that they mimic LV’s designs and handbags in a way that is recognizable, they do so as a drawing on a product that is such a conscious departure from LV’s image of luxury—in combination with the slogan “My other bag”—as to convey that MOB’s tote bags are not LV handbags,” said the court. “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.” It further pointed out that the entire concept of My Other Bag is using the luxury image to convey that these bags are just the opposite.

Copyright Infringement

The Second Circuit found that there was no copyright infringement because the use of the Louis Vuitton designs was transformative, which is important to a fair use analysis; that is, My Other Bag added new meaning or message to the copyrighted images. The court also thought the rest of the fair use factors were either in favor of My Other Bag or irrelevant to the case.

So, what does the Second Circuit’s affirming of the summary judgment mean for Louis Vuitton? Its suit against My Other Bag is more than likely dead now. Although, given the luxury brand’s self-described “active and aggressive” trademark enforcement, it will be back in court soon enough.

The case is Louis Vuitton Malletier, S.A. v. My Other Bag, 16-241-cv, United States Court of Appeals, Second Circuit.

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