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Court Rules Humor is Not Louis Vuitton’s Bag

On January 6, 2015, the United States District Court for the Southern District of New York awarded summary judgment against self-described “active and aggressive” trademark enforcer Louis Vuitton, and in favor of My Other Bag, Inc. (“MOB”), a producer of canvas tote bags which parody luxury handbags. In doing so, the Court admonished Vuitton and other prominent trademark owners to “take a joke.”

Vuitton filed suit against MOB, who marketed its affordable line of totes as “[p]layfully parodying the designer bags we love, but practical enough for everyday life.” See Opinion, Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 1:14-cv-03419-JMF (S.D.N.Y. Jan. 1, 2016). One side of the bag was printed with the words “My Other Bag…”; the other side of the bag featured an illustration of the iconic Vuitton interlocking design replaced by the MOB logo. Vuitton sued for trademark dilution under the Lanham Act and New York law, as well as federal trademark and copyright infringement. 

The Court rejected Vuitton’s argument that dilution could have occurred under either federal or state law because the tote bags fell under the fair use exception as a parody. Although statutorily undefined, the Court discussed the concept of parody in detail and held that a parody will both invoke the original product but also differentiate itself from the original product by communicating the product was meant to be a joke. The Court reasoned MOB accomplished just this by parodying the old “my other car…” bumper stickers and placing the message on a canvas tote bag, clearly indicating that this bag was in fact not an iconic Louis Vuitton luxury bag. Additionally, part of the joke was the juxtaposition of the Vuitton bag as a symbol of status and luxury, with an cheap, common tote meant for everyday use at the gym or grocery store.

Vuitton defended its suit by claiming the MOB products mocked MOB itself, or in the alternative, MOB mocked a larger social commentary about status and luxury beyond that of just the recognizable Vuitton trademark. The Court rejected these arguments. By placing a caricature of a Vuitton bag on the MOB product, the product was clearly making a social commentary on the Vuitton handbags themselves. In addition, without the reference to a brand of luxury handbag, the MOB totes could not successfully complete the parody—the joke would be lost if merely depicting a nondescript handbag. Even if the bag did not qualify as fair use under the Lanham Act, the Court ruled the parody of the MOB bags would not weaken the distinctiveness of the Vuitton trademark. Although MOB deliberately used the Vuitton-style trademark, it did so in such a way that it conveyed a simultaneous message that it was certainly not the source of the Vuitton products by how it poked fun of the luxury handbag. 

For the same reasons its dilution claims failed, Vuitton’s arguments for trademark infringement also failed. Because of Vuitton’s strong mark, and the clear humor behind the MOB totes, the Court held, in context, it was unlikely that consumers would be confused.

Finally, the Court held there was no copyright infringement, because MOB’s bags were a fair use of Vuitton copyrighted design. Although the Court applied the traditional fair use factors in assessing this issue, once again, the conclusion that the MOB totes are a parody in effect carried the day for the Court. 

If other courts follow the decision’s rationale, the enforcement of well-known trademarks might suffer a blow should defendants raise a parody defense. Conversely, if well-known brands are told to take a joke, smaller companies may have more room to use humor involving well-known marks in their own products.