Louis Vuitton Malletier S.A. v. My Other Bag, Inc.
674 F. App'x 16 (2016)
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Rule of Law:
The use of a famous trademark in a parodic manner on a dissimilar product is a protected fair use that does not constitute trademark dilution or copyright infringement, so long as the parody conveys that it is both the original and, simultaneously, not the original.
Facts:
- Louis Vuitton Malletier, S.A. (LV) is a luxury brand that manufactures and sells high-end handbags with distinctive, trademarked designs.
- My Other Bag, Inc. (MOB) produces and sells inexpensive, plebian canvas tote bags.
- On one side of its bags, MOB printed stylized, cartoon-like drawings that mimicked the designs of famous luxury handbags, including those made by LV.
- On the other side of the bags, MOB featured its name and the slogan 'My other bag,' a play on the popular bumper-sticker joke.
- MOB's product was a conscious departure from LV's image of luxury and was not a direct market competitor.
Procedural Posture:
- Plaintiff Louis Vuitton Malletier, S.A. (LV) filed a lawsuit against Defendant My Other Bag, Inc. (MOB) in the U.S. District Court for the Southern District of New York.
- LV's claims included federal and state trademark infringement, trademark dilution, and copyright infringement.
- The district court (a trial court) granted summary judgment in favor of the defendant, MOB, on all claims.
- LV, as the appellant, appealed the district court's award of summary judgment to the U.S. Court of Appeals for the Second Circuit, where MOB was the appellee.
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Issue:
Does a company's sale of canvas tote bags featuring cartoon-like drawings of a luxury brand's handbags, alongside the slogan 'My other bag,' constitute trademark infringement, trademark dilution, and copyright infringement, or is it a protected parody under the fair use doctrine?
Opinions:
Majority - Per Curiam
No. The sale of the tote bags does not constitute trademark infringement, dilution, or copyright infringement because it is a protected parody. For trademark dilution, the court found MOB's bags were a clear parody, which is a 'fair use' exclusion from liability. A parody must convey two simultaneous and contradictory messages: that it is the original, but also that it is not the original. MOB's bags accomplished this by recognizably mimicking LV's designs on a consciously inexpensive product with the humorous slogan 'My other bag,' which jokes about LV's luxury status. The court distinguished this from impermissible uses where a mark is used merely to sell a competing product. For copyright infringement, the court concluded the parodic use was transformative, creating a 'new expression and message.' Finally, regarding trademark infringement, the court affirmed there was no likelihood of consumer confusion due to obvious differences in the products, lack of market proximity, and minimal evidence of actual confusion.
Analysis:
This decision strengthens the parody defense against claims of trademark dilution and copyright infringement within the Second Circuit. It clarifies that a parody does not need to be negative or critical; a 'gentle' and even 'complimentary' joke can qualify for fair use protection. The ruling provides a clear precedent distinguishing a legitimate, transformative parody from a simple commercial use of another's trademark, focusing on whether the use creates a new, communicative message. This case will likely embolden creators of parody products and serve as a cautionary tale for luxury brands attempting to police humorous, non-competing uses of their marks.
