When it comes to famous trade marks, no other fashion house compares to the distinction and recognition afforded to Louis Vuitton’s iconic ‘LV’ monogram. Much more than just a design or a trade mark, the renowned LV logo is a status symbol and statement of luxury and exclusivity.
To protect the significant value in its brand then, Louis Vuitton (self described as "active and aggressive”) relentlessly defends use of its trade mark. It often brings legal proceedings to enforce its rights when it considers its mark has been misused or infringed.
Louis Vuitton’s concern is not only with counterfeits (copies of its own products), but also with any possible "dilution" of its brand by use of its marks in relation to goods the company does not make. These can range from the ordinary (mobile-phone cases or basketballs) to the extraordinary (ladies’ guns or even waffle-makers). So, when Los Angeles-based “My Other Bag” released its novelty canvas shopping tote bearing an LV-esque monogram, and referencing the well-known “My other Car is a…” joke, Louis Vuitton took action in copyright infringement, trade mark infringement and trade mark dilution.
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Left: My Other Bag's - Zoey Tonal Brown Tote
The concept of “dilution” is explained in Tiffany (NJ) Inc v Ebay Inc 576 F Supp. 2d 463, 521-22 (SDNY 2008): “When an individual encounters a mark (e.g. a word or symbol) in a store or watching a commercial, he or she can develop an association between a product or service and its corresponding quality, brand reputation or origin.” Anti-dilution laws protect those acquired associations from being diluted by other uses of a trade mark.
To succeed on a dilution claim under US law, a plaintiff must prove that (1) the trade mark is truly distinctive or has acquired secondary meaning, and (2) there is a likelihood of dilution as a result of blurring (Ergowerx Int’l, LLC v Maxell Corp of Am, 18 F Supp 3d 430, 451 (SDNY 2014). Blurring is where the use of a mark or trade name impairs the identity and distinctiveness of a similar, famous mark by use on non-competing goods.
Louis Vuitton’s case
Louis Vuitton sued, alleging that My Other Bag created, marketed and sold designs that infringe an array of its trade marks and copyrights, thereby putting its “decades of substantial investment and effort at risk.” Louis Vuitton also claimed that My Other Bag’s "marketing strategy invokes and emphasises the fashionable character of its products and its intent to create an association with Louis Vuitton." This includes the deliberate selection of distribution channels "associated with high fashion and luxury." As a result, Louis Vuitton claims that My Other Bag is likely to create confusion in the marketplace, as consumers are likely to believe that My Other Bag's designs are authorised or endorsed by Louis Vuitton, or that the design house is associated with the products in some way. Moreover, Louis Vuitton alleges that My Other Bag's use of its trade marks is likely to blur the distinctiveness of its marks (making them appear less exclusive than they actually are).
My Other Bag responded to the action with a claimed “Parody Defence” – that there is no likelihood of consumer confusion because the goods will be recognised as a parody and not taken seriously as an infringement. US law provides that parodying a mark is not actionable for infringement, it being “a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trade mark with the idealised image created by the mark’s owner” (Louis Vuitton Malletier SA v Haute Diggity Dog LLC 507 F 3d 252, 60 (4th Cir 2007)).
If the use is identifiable as a parody, there can be no “confusion” as is required for trade mark infringement. Customers will not accidentally buy My Other Bag’s bags when they meant to buy a Louis Vuitton, so there is no risk of competition. This is not the first time Louis Vuitton have faced the Parody Defence: the above quote coming from its unsuccessful suit against Haute Diggity Dog, producer of the “Chewy Vuitton” dog chew toy complete with a pattern mimicking the LV Murakami handbag. The Court held that the use was a parody, not an infringement of Louis Vuitton’s trade marks and copyright.
Here, Louis Vuitton replied that because My Other Bag copied not only Louis Vuitton bags, but other luxury fashion-houses’ designs and trade marks (Chanel, Miu Miu, and others), the bags were not a specific parody of Louis Vuitton, and therefore did not meet the required elements for a parody to be found.
The Federal District Court of New York City disagreed: “It is self-evident that MOB [My Other Bag] did mean to say something about Louis Vuitton specifically. That is, Louis Vuitton’s handbags are an integral part of the joke that gives MOB [My Other Bag] its name and features prominently on every tote bag that MOB [My Other Bag] sells. In arguing otherwise, Louis Vuitton takes too narrow a view of what can qualify as a parody. The quip “My Other Bag . . . is a Louis Vuitton,” printed on a workhorse canvas bag, derives its humour from a constellation of features — including the features of the canvas bag itself, society’s larger obsession with status symbols, and the meticulously promoted image of expensive taste (or showy status) that Louis Vuitton handbags have, to many, come to symbolize.
The fact that MOB [My Other Bag]’s totes convey a message about more than just Louis Vuitton bags is not fatal to a successful parody defense […] And the fact that Louis Vuitton at least does not find the comparison funny is immaterial; Louis Vuitton’s sense of humour (or lack thereof) does not delineate the parameters of its rights (or MOB’s [My Other Bag]'s rights) under trademark law.
The Court held that My Other Bag’s use of Louis Vuitton’s marks qualifies as fair use and would not dilute Louis Vuitton’s brand. It also did not infringe its trade marks or copyright. Even if the use was not fair, My Other Bag still would not have infringed, because its tote bags posed no danger of impairing the distinctiveness of Louis Vuitton’s marks, as required for a successful dilution claim. Use causing an “association” is not enough to infringe. As in Haute Diggity Dog, My Other Bag referenced Louis Vuitton so as to convey the simultaneous message that it was not in fact a source of Louis Vuitton products. This made it only less likely that My Other Bag would impair Louis Vuitton’s distinctiveness. There was no likelihood that an appreciable number of ordinarily prudent purchasers would be misled or confused.
The result can be contrasted to a recent case, Louis Vuitton v Hyundai, in which the parody defence was unsuccessful (Hyundai used a basketball with the LV monogram for one second in an advertisement). The Judge here distinguished the Hyundai decision, but declined to follow it in any case: “In the Court’s view, the Hyundai Court blurred the distinction between association and dilution… Association is a necessary, but not sufficient, condition for a finding of dilution by blurring.”
The decision may come as a welcome reprieve for artists and other entrepreneurs, as Tara Martin, CEO and founder of My Other Bag expressed in response to the win “not only for the My Other Bag brand, but for other entrepreneurs, writers, artists, film makers, designers, anyone who uses their creativity and voice to make a statement. Parody is one of the oldest and most beloved ways in our culture to address social, economic, and political issues.”
The Situation in New Zealand
In New Zealand, unlike the United States, there is no parody defence to an action for infringement under either the Trade Marks Act 2002 or Copyright Act 1994. There is a fair dealing exception under section 42 of the Copyright Act however it only applies in narrow circumstances (criticism, review, reporting of current events and research or private study).
The recent interim injunction decision of Solid Energy New Zealand Ltd v Mountier (26/7/07, Chisholm J, HC Christchurch CIV-2007-409-441) highlights the lack of an express parody and satire fair dealing exception. Solid Energy was successful in both trade mark and copyright infringement when an activist group produced a mock report about the activities of Solid Energy containing Solid Energy’s logo and name. The normal trade mark infringement requirements which include likelihood of confusion or deception were not considered. In the present case, My Other Bag’s use was not of an identical mark. Therefore the confusion requirement could prevent a finding of trade mark infringement. However, if My Other Bag’s design was held to be a substantial reproduction of Louis Vuitton’s copyright design, Louis Vuitton would still be likely to achieve a similar result.