My Other Bag (MOB), an affordable canvas tote bag company that features graphics of several luxury handbags on its products, was recently granted a motion for summary judgment in Louis Vuitton’s trademark infringement suit against it. MOB had successfully argued that its use of LV’s trademarks was necessary because its bags are clearly a parody of pricier ones.
We’ve talked a lot about how someone who doesn’t own a particular copyright or trademark might still be able to use it under fair use without explicit permission from the rights holder, and parody is another defense that can be raised against a trademark infringement or dilution claim. (It can also be used in copyright infringement cases.) The average person’s idea of what a parody is, though, is not necessarily how the law sees it; it’s not simply creating a comical take on the original trademark. The analysis into what meets the standard for parody is somewhat more complex, but before we discuss why the court decided in favor of MOB, let’s review what’s necessary to prove trademark infringement and dilution.
Trademark Dilution
Dilution happens when a consumer assumes an association between the rightful trademark owner’s goods and the infringer’s. Louis Vuitton was pursuing a dilution by blurring claim—its main claim—which means it believed that MOB was causing it to lose the uniqueness of its marks by selling canvas totes printed with images of its famous bags. A successful claim has to show that: (1) the trademark is distinctive and has acquired secondary meaning, and (2) a likelihood of dilution by blurring, which is broken down into its own factors: (a) the degree of similarity between the challenged mark and the famous mark, (b) the degree of distinctiveness of the famous mark, (c) the extent to which the owner of the famous mark is engaging in exclusive use of the mark, (d) the degree of recognition of the famous mark, (e) whether the user of the mark or trade name intended to create an association with the famous mark, and (f) any actual association between the mark or trade name and the famous mark.
Trademark Infringement
In order to be successful with a trademark infringement claim, the owner has to show a likelihood of confusion as to the source of the goods. In this case, Louis Vuitton was arguing that consumers would see MOB’s products and think that the luxury company also produced them. There are eight factors—called the Polaroid factors—that a court will use for analysis to determine whether the second user will mislead buyers: (1) the strength of the trademark, (2) similarity of the marks, (3) the proximity of the products and their competitiveness with one another, (4) evidence of the senior user moving into the market of the secondary user, (5) evidence of actual confusion, (6) evidence that the imitative mark was adopted in bad faith, (7) respective quality of the products, and (8) sophistication of customers in the relevant market. The results are taken in totality.
Why Parody Prevailed
Parody is specifically mentioned in the trademark statute as a defense against dilution by blurring. While there’s no definition included, we have a lot of case law. Interestingly enough, in another trademark suit from LV in 2007, parody was defined as “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 also do something else: it has to reference the original while making it clear that it’s not the original.
The court wrote that the whole idea behind the bags was the joke about how these canvas totes aren’t the luxury versions. You essentially have to finish the sentence of the company’s name to get it: “My other bag…is a Louis Vuitton,” and it’s poking fun at that fact. MOB canvas prints are clearly just detailed drawings of the high-end bags, and the company even advertises itself as being the type of bag a socially-conscious fashionista would use for errand-running and supermarket trips; no one’s putting groceries in a several-thousand-dollar Louis. They’re remarkably different. The court said MOB was commenting on society’s obsession with owning status symbols and showing them off.
When the court applied the factors for infringement and dilution, it found that the whole concept of having “another bag” that was actually the high-end one made it impossible for Louis Vuitton’s claim to succeed because there couldn’t be any confusion. The court also thought that this business model drew more attention to the distinctiveness of the Louis Vuitton brand.
Where creative minds come together
Louis Vuitton has created an image for itself as being the brand for the discerning consumer, who is looking for a high-quality, expensive item and has a certain taste. The crafted image probably makes it hard for the company to pursue trademark cases when this seems to preclude the existence of a likelihood of confusion. LV is a heavily copied brand, so there will be more litigation in the future, and it will be interesting to see how courts perform this analysis.
Read more about trademarks right here at our blog.
