THE FASHION LAW EXCLUSIVE – The Louis Vuitton vs. My Other Bag case is not over yet. After winning a ruling in the Southern District of New York court earlier this month, in connection with a trademark infringement and dilution and copyright infringement case, My Other Bag Inc. is “now demanding the ‘trademark bully’ pay nearly $400,000 attorneys’ fees, marking the latest effort to apply the U.S. Supreme Court’s Octane Fitness ruling to a trademark case,” according to Law360. The California-based brand, known for its canvas tote bags that bear depictions of famous designer bags, filed a motion for attorney’s fees and other costs with the court this past Friday.
According to a blog post authored by Paul Alan Levy, one of My Other Bag’s attorneys: “Drawing on arguments we made last year to the Fifth Circuit in Baker v. DeShong (that case is on hold because the trademark plaintiff filed for bankruptcy), we have urged Judge Furman to agree that the Second Circuit’s approach to whether a lawsuit is ‘exceptional’ under the Lanham Act was implicitly overruled by the Supreme Court’s decision in Octane Fitness, which construed a similar provision allowing fee awards for ‘exceptional’ patent cases in circumstances that go well beyond bad faith.”
But that’s not all. Based on the SDNY’s docket, we can report that on Monday the Paris-based brand filed to appeal the ruling, in which Judge Jesse M. Furman held that MOB’s canvas totes, which replicate a number of particular Louis Vuitton bag styles (including the Speedy and Neverfull) and specific Louis Vuitton trademarks and copyrights, amount to parodies and thus, are not actionable sources of trademark infringement or dilution. The appeal is not terribly surprising, given the largely unexpected nature of Furman’s finding, especially when considered in connection with the case law in this area in the SDNY.