MOB receives early Xmas present: 2d Circuit affirms LV’s loss

Louis Vuitton Malletier S.A. v. My Other Bag, Inc.,
16-241-cv (2d. Cir. Dec. 22, 2016)
Contrary to my expectations for the Second Circuit, this is a quick summary affirmance—testament to Judge Furman’s
careful reasoning below (which one would hope supports MOB’s fee application). Even assuming de novo review of each Polaroid factor, the court of appeals
agreed on infringement. “Specifically, obvious differences in MOB’s mimicking
of LV’s mark, the lack of market proximity between the products at issue, and
minimal, unconvincing evidence of consumer confusion compel a judgment in favor
of MOB on LV’s trademark infringement claim..”
Dilution: MOB’s bags mimic LV’s designs and handbags “as a
drawing on a product that is such a conscious departure from LV’s image of
luxury—in combination with the slogan ‘My other bag’—as to convey that MOB’s
tote bags are not LV handbags.”  Although
“the joke on LV’s luxury image is gentle, and possibly even complimentary to
LV,” it’s still a parody, reminding us we’re free to laugh at the mark’s
meaning.  That’s the “very point of MOB’s
plebian product,” as opposed to using a mark just to promote goods or services,
“which is impermissible.”  [Unfortunately,
citing the Charbucks case despite the fact that Charbucks was ultimately found
non-diluting, as well as Harley Davidson, Inc. v. Grottanelli, 164 F.3d 806,
813 (2d Cir. 1999) (enjoining use of altered version Harley-Davidson logo to
advertise motorcycle repair shop on confusion grounds).]
LV argued that MOB used LV’s marks as a designation of
source, precluding dilution fair use. 
The district court found that this wasn’t so, and the court of appeals
agreed.  “[T]he nature of MOB’s
business—it sells quite ordinary tote bags with drawings of various
luxury-brand handbags, not just LV’s, printed thereon—and the presence of ‘My
other bag,’ an undisputed designation of source, on one side of each bag,
independently support summary judgment for MOB on this designation-of-source
State law: though there’s no explicit fair use defense in
state law, “the manifest parodic use here precludes the requisite finding that
the marks are ‘substantially similar.’”  [We all know this makes no sense, right?  How about: at the very minimum, free speech
limits on dilution lead to reading this defense into state law.]

Copyright: MOB’s parodic use of LV’s designs produces a “new
expression [and] message” that constitutes transformative use. The remaining
fair-use factors either weighed in MOB’s favor or were irrelevant.  [Judge Calabresi at oral argument was really
interested in the question of the relevance of “intent” to parody, but that
didn’t translate to any commentary in the opinion.]

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