THE FASHION LAW EXCLUSIVE - Unsatisfied with the rulings from two New York federal courts, Louis Vuitton has asked the United States’ highest court to hear its case against My Other Bag (“MOB”). According to the Paris-based design house’s petition for writ of certiorari, “Louis Vuitton has devoted more than a century to developing, promoting, and protecting trademarks that are universally recognized symbols of the company’s products and that constitute a guarantee of the products’ origin and quality.”
Louis Vuitton's petition comes nearly three years after it first filed suit against MOB, a small Los Angeles-based brand known for its designer bag-on-a-canvas bag styles, which include Balenciaga, Proenza Schouler, YSL, Celine, and obviously, Louis Vuitton lookalikes. As first reported by TFL in 2014, Louis Vuitton alleged in its suit that the MOB bags not only infringe its federally registered trademarks and copyrights, they also dilute the "distinctive quality" of its world-famous trademarks.
Louis Vuitton’s counsel asserts in its petition to the Supreme Court, "MOB sought to capitalize on the distinctiveness and positive public perception of Louis Vuitton’s marks by marketing otherwise-ordinary canvas bags bearing its famous marks on one side and the words 'My Other Bag . . .' on the other. In so doing, MOB created a risk that the public will no longer associate Louis Vuitton’s marks only with Louis Vuitton’s high-end products but will also associate the marks with MOB’s bags."
“Permitting an entire business model premised on the exploitation of famous marks to sell knock-off products is flatly at odds with Congress’s intent to protect famous marks from dilution," the petition further reads.
Upholding the U.S. District Court for the Southern District of New York’s January 2016 ruling that MOB’s inexpensive canvas bags are, in fact, covered by the parody defense, the Second Circuit Court of Appeals ruled in MOB’s favor in December 2016.
Before the Supreme Court would be the issue of the appropriate test for determining whether an allegedly dilutive use of a party's trademarks is protected by the parody defense, and according to Louis Vuitton, “the question presented in this case has far-reaching significance for countless owners of famous and distinctive marks that, like Louis Vuitton, depend on the protections of the [Trademark Dilution Revision Act (“TDRA”)] to safeguard their intellectual property against improper dilutive uses.”
As set forth in Louis Vuitton’s petition, “MOB sought to capitalize on the distinctiveness and positive public perception of Louis Vuitton’s marks by marketing otherwise-ordinary canvas bags bearing its famous marks on one side and the words ‘My Other Bag . . .’ on the other. In so doing, MOB created a risk that the public will no longer associate Louis Vuitton’s marks only with Louis Vuitton’s high-end products but will also associate the marks with MOB’s bags."
In its suit, Louis Vuitton cited a dilution-by-blurring claim (among other claims) against MOB “to protect the distinctiveness of its marks, but the Second Circuit held that MOB’s use of Louis Vuitton’s marks is not actionable because it supposedly constitutes ‘parody’ and therefore qualifies as fair use.” This ruling, according to Louis Vuitton, “created a direct conflict” with existing case law in the Fourth Circuit “regarding the test for identifying parody under the TDRA.”
(Note: Trademark dilution is different from infringement. Dilution occurs when an entity uses a trademark that is sufficiently similar to a famous mark such that it harms consumer perception of the famous mark).
As set forth by Vuitton, “The Fourth Circuit [court] requires that a parody immediately convey that the famous mark owner’s products and the unauthorized products are different and immediately communicate a joke that confirms that the unauthorized use is intended for an expressive purpose … The Second Circuit required neither of these elements when it concluded that MOB’s use of Louis Vuitton’s marks is a parody."
Louis Vuitton believes that My Other Bag is sorely lacking in this respect as it has been marketed "as a compl[e]ment to [consumers'] Louis Vuitton bags," and it was not until the start of this litigation that "MOB added language to its website claiming that it was 'playfully parodying' designer handbags."
Moreover, per Vuitton, "MOB uses social media to promote its products to fans of Louis Vuitton, repeatedly featuring Louis Vuitton bags in its marketing, either by themselves or next to an MOB bag depicting a Louis Vuitton bag, in order to cement an association among consumers between Louis Vuitton and MOB."
Instead of following the case law set fourth by the Fourth Circuit court, the Second Circuit court held that the parody exception “is available even if the purported parody is ‘gentle’ or even ‘complimentary.’” Such a “novel conception of parody” by the Second Circuit “creates significant uncertainty for all owners of famous marks, who are confronted with divergent parody tests depending on the jurisdiction in which suit is filed.”
Moreover, “The Second Circuit’s decision vastly expands the fair-use exception beyond the narrow bounds that Congress intended, leaving famous marks vulnerable to widespread dilution through the production of imitation products marketed under the guise of ‘parody.’ The spread of products like those at issue here—designed to appeal to fans of the products that are supposedly being parodied rather than comment on, criticize, or make fun of those products—presents exactly the type of harm that the TDRA was designed to prevent, the slow loss of the distinctiveness of the famous mark.”
Louis Vuitton claims that the Second Circuit got it wrong on other fronts, as well, including that its “adoption of its capacious parody test restricts the availability of trademark dilution claims” and its “approach to parody is also fundamentally inconsistent with the TDRA because it confuses trademark dilution with trademark infringement by relying on considerations—such as likelihood of confusion—that Congress has made clear have no relevance in the dilution setting.”
The Supreme Court’s “intervention is necessary to establish a nationally uniform test for identifying parody in dilution cases, to restore the careful balance between trademark protections and First Amendment rights that Congress struck in the TDRA, and to prevent the widespread, irreversible devaluation of famous marks.”
In response to Louis Vuitton's filing, MOB founder Tamara Martin told TFL exclusively, “Just as we expected Louis Vuitton’s opposition to our motion for attorney fees, we expected this petition. We look forward to reviewing the petition and will respond appropriately, as we have done throughout this case."
The Supreme Court will decide whether to grant certiorari and hear the appeal from the lower court, which is extremely rare. According to the Supreme Court blog, of the 7,000 to 8,000 cert petitions filed each term, the court grants certiorari and hears oral argument in only about 80. Granting a cert petition requires the votes of four justices.
UPDATED (OCTOBER 2, 2017): Turning away an appeal by Louis Vuitton on Monday, the Supreme Court has left intact a federal appeals court ruling that said My Other Bag Inc. was selling permissible parodies. The challenged totes say "My Other Bag …" on one side with an image of a far more expensive Louis Vuitton bag on the other.