It’s in the Bag: True Parody Cannot Dilute Famous Mark

by McDermott Will & Emery

McDermott Will & Emery

The US Court of Appeals for the Second Circuit upheld a grant of summary judgment that a canvas tote bag with a drawing of an iconic handbag printed on its side did not infringe or dilute the trademark of the iconic high-end handbag maker. Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., Case No. 16-241 (2d Cir., Dec. 22, 2016) (per curium).

Louis Vuitton Malletier (LV), a manufacturer of luxury designer bags, brought suit against My Other Bag (MOB), a manufacturer of canvas-type tote bags, alleging trademark infringement and federal and state trademark dilution. The district court granted summary judgment to MOB as to all of the trademark causes of action on the grounds that MOB had properly made use of the parody defense. The accused MOB canvas tote bags have, on their sides, drawings of various luxury brand handbags, not just LV bags. 

In a succinct decision, the Second Circuit agreed with the district court that there was no trademark infringement because of the district court’s proper analysis of the Polaroid factors, namely, that there were obvious differences in MOB’s “mimicking” of the LV mark (e.g., inserting the letters MOB in between the stylized flowers), the disparate channels of trade and lack of market proximity, and the unpersuasive and scant evidence of consumer confusion submitted by LV.

LV argued that the district court erred in holding that the MOB canvas totes met the requirements of a parody defense, based largely on a single section of testimony from MOB’s founder regarding her totes and the drawing of an LV product on the side of the MOB bags. LV argued that MOB could not use the parody defense because the deposition evidence showed that MOB used the LV marks as a “designation of source.” The Second Circuit, however, agreed with the district court that the comment only showed that MOB was referring to its founder’s view that there was no likelihood of confusion.

To refute a claim of trademark dilution using a parody defense, MOB had to show that it was conveying two simultaneous and contradictory messages: 1) that it is the original, and 2) that it is not the original, but is instead a parody. The district court agreed that the MOB bags called to mind the original LV products by using similar imagery and minor changes such as exchanging the MOB initials for the LV ones, but that the MOB canvas totes also were “a conscious departure” from the luxury leather goods of LV. In fact, the ads for the MOB products touted the fact that unlike LV bags, the MOB canvas totes could be used to carry dirty gym clothes or groceries. Accordingly, the Second Circuit concluded that the juxtaposition of the famous LV mark with the irreverent representation on the canvas totes was a proper parody.

Practice Note: To successfully use the parody defense, it is not enough to invoke the famous mark or create a play on words; there should be a clear and well-documented intent to make fun of, criticize or comment on the famous mark. LV has requested en banc review of the decision by the Second Circuit, arguing that the panel’s finding that MOB’s products “were obviously a joke” is based on an improper subjective finding.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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