Louis Vuitton Loses Cases over Parody Tote Bags

What’s piracy and what’s parody?

That was the issue addressed in a recent case by Louis Vuitton Malletier, S.A. (LV) against a company called My Other Bag, Inc. (MOB).

MOB sells simple canvas tote bags with the text “My Other Bag…” on one side and drawings of iconic (and expensive) designer handbags on the other.

The drawings show handbags from Louis Vuitton, Chanel, and other luxury-goods makers.

As a federal district court noted,

MOB’s totes — indeed, its very name — are a play on the classic “my other car …” novelty bumper stickers, which can be seen on inexpensive, beat up cars across the country informing passersby — with tongue firmly in cheek — that the driver’s “other car” is a Mercedes (or some other luxury car brand). The “my other car” bumper stickers are, of course, a joke — a riff, if you will, on wealth, luxury brands, and the social expectations of who would be driving luxury and non-luxury cars. MOB’s totes are just as obviously a joke, and one does not necessarily need to be familiar with the “my other car” trope to get the joke or to get the fact that the totes are meant to be taken in jest.

The Louis Vuitton company, however, saw the totes as infringing its intellectual property rights.

Can’t Take a Joke?

As the district court said,

Louis Vuitton Malletier, S.A. (“Louis Vuitton”), the maker of Louis Vuitton bags, is perhaps unfamiliar with the “my other car” trope. Or maybe it just cannot take a joke.

LV sued MOB for trademark dilution and infringement under the federal Lanham Act (which protects trademarks) and also for copyright infringement.

Trademark Dilution

As the court noted,

The classic case of dilution by blurring involves an unrelated product coopting a famous name or trademark as its own — “hypothetical anomalies” such “as Dupont shoes, Buick aspirin tablets, Schlitz varnish, Kodak pianos, Bulova gowns, and so forth.”

Other courts have used examples like “Tylenol snowboards, Netscape sex shops and Harry Potter dry cleaners.”

Relevant factors in ruling on whether trademark dilution has occurred include:

1. the degree of similarity between the challenged mark and the famous mark;
2. the degree of distinctiveness of the famous mark;
3. the extent to which the owner of the famous mark is engaging in exclusive use of the mark;
4. the degree of recognition of the famous mark;
5. whether the user of the mark or trade name intended to create an association with the famous mark; and
6. any actual association between the mark or trade name and the famous mark.

However, “fair use” is a defense to a claim of trademark dilution, and parody is a form of fair use under both copyright and trademark law.

The court found that the MOB bags qualified as parodies: 

a parody clearly indicates to the ordinary observer “that the defendant is not connected in any way with the owner of the target trademark.” That is precisely what MOB’s bags communicate. Indeed, the whole point is to play on the well-known “my other car …” joke by playfully suggesting that the carrier’s “other bag” — that is, not the bag that he or she is carrying — is a Louis Vuitton bag.

LV appealed and the Second Circuit upheld the lower court’s decision.

This decision provides some useful guidance to companies that might want to refer to — but not directly copy — other companies’ products.