My Other Bag is Not a Louis Vuitton

Louis Vuitton (LV) is known for its vigorous protection of the trademarks of its luxury brands but clearly they missed the mark on picking a fight against ‘My Other Bag’ (MOB) in the US District Court of the Southern District of New York (Louis Vuitton Malletier, S.A. v. My Other Bag, Inc, No. 16-241-cv (2nd Cir. Dec 22, 2016).  The Christmas present they were expecting, and usually get awarded from the Courts, didn’t eventuate…hold your breath people…Louis Vuitton lost!

In fact, the Second Circuit affirmed the earlier decision of the District Court that MOB had not in fact breached the trademarks of the French design house nor had the bag maker diluted the brand’s reputation by blurring.  To the contrary, the Court found that MOB had adequately discharged its onus of establishing the fair use defence, by way of parody, and in fact, if anything, the distinctiveness of the Louis Vuitton marks were likely to have been reinforced and enhanced.

The MOB totes are the invention of Tara Martin who cleverly featured cartoon imagery of high end bags on the one side of a canvas tote while displaying the slogan “My Other Bag” on the other.  The totes retailed for in the vicinity of $30 while we all know that an LV acquisition is likely to set you back a $1000 or so.

mob-image

LV failed on each of its arguments and in arriving at its decision, that there had been no trademark infringement, the Court observed that:

  1. there were obvious differences in the manner in which MOB mimicked the LV trademark;
  2. an LV high end luxury handbag and a MOB tote had a lack of market proximity; and
  3. LV had failed to produce any convincing evidence that consumers would be confused by the two bag manufacturers.

With respect to the LV argument that the MOB bags diluted its trademarks, the Second Circuit held that the MOB totes were a parody bringing them within the “fair use” exclusion from liability for trademark infringement.  In their decision the Court, explained that a parody must simultaneously convey two messages – first, that it is the original but also that it is not the original and it is instead a parody.  Applied to the facts at hand the Court concluded that MOB mimicked the LV brand but also conveyed a distinguishable inexpensive look with its parodic slogan “My Other Bag.”  The gentleness of the parody did not preclude it from acting as such as the parody clearly indicated to the ordinary observer that MOB is not connected in any way to the owner of the trademark.

The Court indicated that where the parody was the very point of the product the defence was likely to be upheld.  Further, the allegation by LV that the totes actually infringed the copyrighted designs of the design house was rejected as the Court found that the cartoon variations of the bags were a “new expression and message” constituting transformative and not infringing use.  The critical factor being that MOB was not using the LV trademark to increase the sales of the MOB totes by inducing consumers to mistakenly believe that the totes are in fact LV bags or somehow endorsed by the fashion house.

Unfortunately for LV, the free advertising and publicity that MOB has received by the failed LV suit may have had the unintended consequence of generating sales for the MOB totes.

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