Why so Serious, Louis Vuitton?

Why so Serious, Louis Vuitton?

It’s nothing new that Louis Vuitton Malletier, S.A. (“Louis Vuitton”) has trouble taking any jokes involving its classic toile monogram. The luxury designer brand has been at the center of multiple lawsuits involving joking references to its products over the past ten years.^[1] The most recent case was filed against My Other Bag (“MOB”), the creator of a line of cheap canvas totes with the words “My Other Bag…” on one side and cartoon imagery of an iconic designer handbag on the other.^[2] The joke is obvious: “inexpensive canvas totes decorated with cartoon versions of the famously expensive, iconic designer handbags.”^[3] But, Louis Vuitton is not laughing.

 

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In 2014, Louis Vuitton sued MOB for trademark dilution and infringement in federal court.^[5] U.S. District Judge, Jesse Furman granted summary judgment to MOB on all claims, and even poked fun at Louis Vuitton, saying, “maybe it just cannot take a joke.”^[6] Judge Furman found that MOB’s use of Louis Vuitton’s marks on its tote bags were meant as a parody and, “therefore, comes under the ‘fair use’ exception^[7] for trademark dilution.”^[8] MOB’s tote bags are “an obvious attempt at humor [and are] not likely to cause confusion or the blurring of the distinctiveness of Louis Vuitton’s marks.” In fact, “it is likely only to reinforce and enhance the distinctiveness and notoriety of [Louis Vuitton].”^[9]

A key defense against claims of trademark infringement and dilution is parody. This allows a defendant to use the plaintiff’s trademark in certain instances due to the fact that there is no likelihood of confusion because the parody will not be taken seriously by consumers.^[10] While a mark in a successful parody defense must initially bring to mind the original mark, it must be clever enough to be clear that it is not the original by being a humorous take on the original.^[11]

The Second Circuit upheld the Southern District of New York’s decision in December 2016, and discussed the unique message that a parody product must communicate to the market.^[12] “A parody must convey two simultaneous—and contradictory—messages: that it is original, but also that it is not the original and is instead a parody.”^[13] MOB’s representation of Louis Vuitton’s marks was an effective parody because the tote bags properly communicated the contradictory message: “the parody accurately identifies the original mark but makes it clear that it is not, in fact, the original mark.”^[14]

MOB’s parody defense was not ruined by the fact that the parody could be seen as one in which the Louis Vuitton mark is presented positively.^[15] Even though the joke on Louis Vuitton’s “luxury image is gentle, and possibly even complimentary to Louis Vuitton,” it does not preclude it from being considered a parody.^[16]

Two aspects of Louis Vuitton’s trademarks make for a straightforward parody case. First, there is distinct market separation, making consumer confusion from MOB’s bags minimal.^[17] MOB sells its totes for less than sixty dollars in the casualwear market segment; whereas, Louis Vuitton sells its handbags for thousands of dollars in the luxury market segment.

Additionally, the strength of Louis Vuitton’s iconic marks may have hurt its claims and benefitted MOB’s parody defense.^[18] Perhaps, even if MOB’s use of Louis Vuitton’s signature marks was not fair, the chance of dilution is slim because the brand is so well known that consumers are likely “both immediately to recognize the target of the joke and to appreciate the obvious changes to the marks that constitute the joke.”^[19] Had Louis Vuitton been a smaller, lesser-known, brand, there may have a been a higher likelihood of confusion and a stronger claim for trademark infringement and dilution.

Proving that it has absolutely no sense of humor, Louis Vuitton recently took the case to the Supreme Court, but was denied certiorari.^[20] The Supreme Court, without explanation, left intact the Second Circuit’s ruling that MOB’s bags are permissible parodies.^[21]

Louis Vuitton has repeatedly argued that its strict approach is necessary to prevent its brand from being infringed upon or diluted. But some critics say that cases against parodies represent an overreach of free speech and that “Louis Vuitton has simply used its economic power to step on the free speech rights of those who do not have deep pockets.”^[22] While Louis Vuitton has had it fair share of successes, the question remains as to whether the designer simply cannot take a joke? Or are they just being hypervigilant because they have a great deal to lose by any diminishment of their brand? Whatever the case may be, Louis Vuitton should heed the age-old advice, “imitation is the sincerest form of flattery.”