My other district court decision is a loss: LV loses parody bag case

Louis Vuitton Malletier, S.A. v. My Other Bag , Inc., No.
14-CV-3419 (S.D.N.Y. Jan. 8, 2016)
 
The Hon. Jesse Furman again demonstrates his good sense.  My Other Bag sells canvas tote bags with the
text “My Other Bag . . .” on one side and drawings meant to evoke iconic
handbags by luxury designers, such as Louis Vuitton, Chanel, and Fendi, on the
other.  The court identified the totes,
and the company name, as “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).”  These bumper stickers riff on expectations
about car drivers and luxury cars, and MOB’s totes were “just as obviously a
joke.” 
 

LV can’t take a joke, and sued for dilution, trademark
infringement, and copyright infringement. 
The court granted summary judgment. 
MOB’s bags have drawings of various bags on them; the ones at issue here
“use simplified colors, graphic lines, and patterns that resemble Louis
Vuitton’s famous Toile Monogram, Monogram Multicolore, and Damier designs, but
replace the interlocking ‘LV’ and ‘Louis Vuitton’ with an interlocking ‘MOB’ or
‘My Other Bag.’”  MOB says its products
are “[e]co-friendly, sustainable tote bags playfully parodying the designer
bags we love, but practical enough for everyday life,” and they sell for $30
and $44.  Its marketing touts the idea
that high-priced designer bags are inappropriate for dirty gym clothes or
groceries, but its casual canvas totes are fine for that: “[T]his luncheon
worthy designer bag doesn’t fit in at the gym, BUT My Other Bag . . . DOES . .
. .”
 
Dilution: An introductory note: the court says, based on
statements in other cases, that the NY and federal analyses are basically the
same, although NY does not require fame. 
Under both laws, analysis “‘must ultimately focus on whether an
association, arising from the similarity between the subject marks, impairs the
distinctiveness of the famous mark’— that is, the ability of the famous mark to
serve as a unique identifier.”  However,
it is hard to reconcile those statements with Deere v. MTD, which very clearly
would have been a defense victory under federal law given the federal
exclusions.  (I have seen suggestions to
the contrary but I don’t find them credible; even Hyundai-style analysis wouldn’t condemn the ad in Deere.) 
Deere, of course, predated the
FTDA and the TDRA, so the Deere court
was not in a position to consider the initial or revised exclusions to federal
dilution. 
 
Takeaway: Even in New York, with perhaps the most developed
history of state-law dilution claims, courts interpret state and federal
dilution law as similarly as possible.  I
don’t think this is just a matter of not wanting to do two different
analyses/judicial economy.  Since we don’t
have any idea what dilution is, courts are understandably leery of trying to
implement two different strained
definitions.  I do wonder what this
implies for future Deere-type cases
brought under NY and federal law—arguably, given Deere’s scope, this is one of them, given that it involves
competitor’s alteration of the mark. If the reasoning for keeping the analysis
the same is that federal dilution law has the same justification as state
dilution law (query why one requires fame and the other doesn’t, then), then
even later federal law can shed light on the proper interpretation of state
law, I suppose, meaning that Deere
should come out differently today.  (Also,
to the extent that state law tries to make non-false/misleading comparative
advertising unlawful, I think it’s unconstitutional, also meaning that Deere should come out differently.)
 
OK, so LV’s theory is dilution by blurring.  MOB argued that federal law requires “use as
a mark” for a dilution claim, and McCarthy agrees, but the court didn’t need to
reach that issue because MOB won anyway. 
First, federal law excludes fair use “other than as a designation of
source for the person’s own goods or services,” including “identifying and
parodying, criticizing, or commenting upon the famous mark owner or the goods
or services of the famous mark owner.” 
Parody is “a simple form of entertainment conveyed by juxtaposing the
irreverent representation of the trademark with the idealized image created by
the mark’s owner,” conveying the contradictory messages that it is and isn’t
the original.
 
As a matter of law, MOB’s bags were fair use.  They communicated a lack of connection to the
original producer with a joke about how this
bag wasn’t a Louis Vuitton bag.  Combined
with the “stylized, almost cartoonish renderings” of LV bags on the totes, the
joke created “significant distance between MOB’s inexpensive workhorse totes
and the expensive handbags they are meant to evoke.  LV’s exclusive image was, at least in part,
the brunt of the joke—LV’s bags are treated revently to communicate status,
while MOB’s totes are utilitarian.
 
LV argued that the bags weren’t really a parody, and that
the company’s CEO stated that she never intended to disparage LV.  As in Hyundai,
any humor was, according to LV, just part of a larger social commentary.  McCarthy doesn’t like Hyundai, and neither does Judge Furman, because the Hyundai court failed to notice the
distinction between association and dilution. 
But in any event, Hyundai is
distinguishable: “it is self-evident that MOB did mean to say something about
Louis Vuitton specifically.”  LV’s
handbags are integral to the joke; that the joke is also about society’s
obsession with status is not disqualifying.
 
Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F.
Supp. 2d 410 (S.D.N.Y. 2002), was a better guide.  That case blessed a pet perfume called Tommy
Holedigger, which resembled a Tommy Hilfiger fragrance in name, scent, and
packaging.  Though the defendant’s
general partner had difficulty expressing the parodic content of his
communicative message, parodies do convey a message; “[t]he message may be
simply that business and product images need not always be taken too seriously;
a trademark parody reminds us that we are free to laugh at the images and
associations linked with the mark.” 
 
LV relied on Dallas Cowboys Cheerleaders, Inc. v. Pussycat
Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979), to argue that the totes couldn’t be be
a parody because they didn’t need to use Louis Vuitton’s trademarks for the
parody to make sense.  (The court doesn’t
address the otherwise outdated/deprecated status of Dallas Cowboys Cheerleaders; wonder what effect the analysis in In re Tam would have here?)  True, MOB could use any well-known luxury
handbag brand to make its points.  But,
while you can talk about sex in athletics without talking about the Cowboys
Cheerleaders, the tote bags here wouldn’t make any sense if they just depicted
a generic handbag: “my other bag . . . is some other bag.”  At least when a parody must evoke one of a
finite set to make its point, the parodist can choose; otherwise it could be
excluded from all under LV’s rationale.
 
LV also argued that there couldn’t be fair use because MOB
used LV’s trademarks “as a designation of source for [MOB’s] own goods.” Given
the overall design of the tote bags—identical, stylized text on one side,
different caricatures on the other—and the fact that the bags used a range of
luxury brands, the court disagreed.  LV’s
marks were the target of the joke, not the designation of source.  LV cited MOB’s CEO’s deposition where she was
asked whether she agreed that the LV pictures with their markings “are
depictions . . . you use in order for people to understand that the product
comes from you, My Other Bag.”  She
responded affirmatively: “People know that the product . . . our tote bags with
those depictions come from My Other Bag.”  But that’s not an admission of use of LV’s
marks to identify the source of MOB’s bags. 
In context, when counsel was attempting to establish likely confusion,
her sole point was that consumers weren’t likely to be confused.
 
Even if MOB were using LV’s marks as a designation of
source, MOB would still win summary judgment, because association caused by
parody strengthens the uniqueness of a famous mark, rather than blurring
it.  Association is necessary to, but not
sufficient for, blurring.  The statute
explicitly requires a likelihood that the association “impairs the
distinctiveness of the famous mark.”  Haute Diggity Dog persuasively explains
why parody is unlikely to do so—parody requires the distinctiveness of the
famous mark to be maintained.  The
mimicry involved in parody is very different from hypothetical “Louis Vuitton
aspirin tablets.”
 
Trademark infringement: also a loser, for many of the same
reasons.  The strength of LV’s marks, in
a parody context, made confusion less likely, so the strength factor favored
MOB or at most was neutral.  Similarity
also didn’t favor LV given the presence of joke signals in the cartoonish
image, the text, and the workhorse style of the canvas bag.  Proximity of the products/bridging the gap
favored MOB because LV isn’t going to make cheap canvas bags, though it does
make “casual” and canvas bags. Its handbags cost hundreds or thousands of
dollars, and were sold exclusively in LV’s stores and on its website.  MOB’s totes are cheaper and sold elsewhere—“in
no meaningful sense ‘competitive’ with Louis Vuitton’s designer handbags.” 
 
Nor was there evidence of actual confusion.  LV pointed to a handful of descriptions of
the MOB bags as “LV” bags.  Even taking
those literally, a handful wasn’t enough to show likely confusion, given the
fact that the bags had been on the market for several years.  But there was no reason to take them
literally, since the speakers were plainly using “LV” as a shorthand to
describe the designs evoking LV bags: they showed that consumers were getting
the joke.
 
MOB’s intent to parody wasn’t bad faith.  Its benefit from using the marks arose from
the humorous association, not from confusion. 
The sad-sack 2d Circuit “quality” factor, which should really just be
put out of its misery, also didn’t favor LV, because LV didn’t show that the
lower quality of MOB totes risked tarnishing its mark, nor were the totes of
the same quality as LV bags and thus more likely to cause confusion.  Consumer sophistication/degree of care
favored MOB because of the substantial price of LV bags, and because “MOB’s gimmick
would be obvious to even its most unsophisticated customers, as one whole side
of the tote bag is blank except for the words ‘My Other Bag . . . .’”  The obviousness of the joke would protect
even a minimally prudent consumer.
 
LV hypothesized post-sale confusion among observers who saw
only one side of the bag and didn’t notice the replacement of LV with MOB in
the logo.  But the Second Circuit
generally treats post-sale confusion as actionable only in the context of
“knockoffs.”  Plus, “no reasonable
observer is likely to infer from the cartoon-like bag-within-the-bag design and
the juxtaposition of MOB’s basic, canvas tote with the exclusive, luxury status
of Louis Vuitton that Louis Vuitton sponsors or otherwise approves of MOB’s
tote bags.”  Furthermore, likely
confusion isn’t assessed using “a hypothetical scenario that is most likely to
result in confusion.” The overall impression of reasonable consumers is key,
and the overall impression/context certainly includes both sides of the bag.
 
Copyright infringement: Nope, this couldn’t substitute for
trademark.  Transformative uses can be
commercial, and usually copy popular, expressive works.  MOB used a reasonable amount in relation to
its aim.  “Finally, although MOB’s totes
are, in an abstract sense, in the same market as Louis Vuitton’s handbags, its
totes do not ‘serve[] as a market replacement for’ Louis Vuitton’s bags in a
way that would make ‘it likely that cognizable market harm to [Louis Vuitton]
will occur.’”

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