The United States Second Circuit has upheld an earlier court’s finding that My Other Bag’s parody design of a Louis Vuitton bag does not infringe Louis Vuitton’s copyright or trade mark rights. For the background to the case and our discussion on the earlier decision, see our article here.The Second Circuit’s decision, issued just before Christmas, was brief and dismissed Louis Vuitton’s appeal in its entirety. This article provides some context around the court’s findings.
In the United States, as in New Zealand, you cannot copy someone else’s copyright works without their authorisation. There are some exceptions though. In the United States, but not in New Zealand, one of those exceptions is where the copying is for the purposes of parody. This falls under the doctrine of fair use. The courts have held that, “[a] parody must convey two simultaneous—and contradictory—messages: that it is the original, but also that it is not the original and is instead a parody.”
In this case, the parody was a My Other Bag (“MOB”) tote bag that featured a drawing of a Louis Vuitton bag, including a variation on the famous LV monogram mark.
Click here to view image.
The Second Circuit court upheld the earlier court’s finding that MOB’s varied design was parodic use of Louis Vuitton’s design. It was a, “new expression and message” and a transformative use of the original LV monogram. There was therefore no copyright infringement.
Trade mark infringement
Louis Vuitton also appealed the earlier court’s finding that there was no trade mark infringement. To succeed, Louis Vuitton had to show (amongst other things) that consumers of MOB’s tote bag would be likely to be deceived or confused into believing that there was some sort of association with Louis Vuitton.
The Second Circuit court found that there were obvious differences in MOB’s mimicking of the LV monogram and a lack of market proximity between MOB’s basic bags and Louis Vuitton’s luxury items. The Second Circuit court also found that Louis Vuitton’s evidence of customer confusion was “unconvincing.” The Second Circuit therefore upheld the earlier court’s finding that there was no trade mark infringement in this case.
Trade mark dilution
Trade mark dilution is an argument available to owners of very well known or famous trade marks. Dilution broadly means a damage to the distinctive or the reputation in a well known mark through the use of another mark that is the same or similar, but used on different goods or services. Louis Vuitton argued here that MOB was damaging the reputation of its LV monogram by using it on its cheap tote bags. It lost this argument in the earlier court.
MOB’s parody defence was again successful on appeal. The Second Circuit also noted that the origin of MOB’s goods was clear. MOB sold quite ordinary tote bags with drawings of various luxury-brand handbags on them (not just Louis Vuitton handbags). MOB also printed the words MY OTHER BAG on the reverse side of the bag, so it was not coat-tailing off the reputation of Louis Vuitton or the LV monogram mark.
Louis Vuitton acknowledges that it is a litigious brand owner. This generally makes sense, given the significant value to its business of marks such as the LV monogram. Unfortunately for Louis Vuitton, however, this case has merely drawn attention to the parody defence as a way of avoiding trade mark infringement and copyright infringement in the United States market.