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THE FASHION LAW EXCLUSIVE – After being shot down by the Second Circuit in its request for a rehearing of its case against My Other Bag, Louis Vuitton appears to be planning to take it to the United States’ highest court. Earlier this month, Louis Vuitton filed an application to the Supreme Court to extend the time to file a petition for a writ of certiorari from May 14, 2017 to July 13, 2017, and the Supreme Court has granted the brand’s request. 

In short: Louis Vuitton is seeking – and as of May 9 was granted – extra time to draft a cert petition. The brand now has until July 13 to file its petition. For the initiated, this is the document that a losing party files with the Supreme Court asking it to review the decision of a lower court.  The Supreme Court will then decide whether to grant certiori 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.

Before the court would be the issue of parody, and likely, the test for determining whether an allegedly infringing use of a party’s trademarks is protected by the fair use defense. 

It is worth noting that the Supreme Court heard the Campbell v. Acuff-Rose Music case in 1988, which centered on whether 2 Live Crew’s song “Pretty Woman” infringed Acuff-Rose’s copyright in Roy Orbison’s “Oh, Pretty Woman” or whether it amounted to parody. In holding that 2 Live Crew’s commercial parody of Roy Orbison’s “Oh, Pretty Woman” was a fair use within the meaning of the Copyright Act of 1976, the court held that a parody’s commercial character is only one element to be weighed in a fair use enquiry and that insufficient consideration was given to the nature of parody in weighing the degree of copying.

It does not appear as though SCOTUS has heard a trademark parody case, though. 

Louis Vuitton’s request for an extension comes nearly three years after it filed suit against My Other Bag (“MOB”). In June 2014, Louis Vuitton filed suit against the small brand known for its designer bag-on-a-canvas bag styles, which include Balenciaga, Proenza Schouler, YSL, Celine, and obviously, Louis Vuitton lookalikes. The Paris-based brand alleged that the MOB bags not only infringe its federally registered trademarks and copyrights, serve to dilute its world-famous trademarks.

Upholding the U.S. District Court for the Southern District of New York’s January 2016 ruling that MOB’s inexpensive canvas bags, which bear cartoon depictions of Louis Vuitton copyright and trademark-protected graphics, are, in fact, covered by the parody defense, the Second Circuit Court of Appeals ruled in MOB’s favor in December 2016. Thereafter, the Second Circuit declined Louis Vuitton’s request for a hearing en banc – or a hearing before the full court of all the appeals judges – stating that its December ruling, which ended Louis Vuitton’s lawsuit against MOB, stands.

MOB has since asked the court to force Louis Vuitton to pay nearly $1 million in legal fees, including its lawyers’ fees and other costs. In its Memorandum of Law in Support of [MOB’s] Application for Award of Attorney’s Fees, MOB’s legal counsel took one last opportunity to slam Louis Vuitton, as it – the court and the media – have done throughout the litigation.

According to MOB’s filing, “Louis Vuitton Malletier has achieved a rare position among the royalty of fashion; it is one of the world’s leading brands. And as a cultural icon, it is not surprising that Louis Vuitton is often the subject of comment, not all of it favorable … Instead of responding to its critics with noblesse oblige, it treats parody as lèse majesté. Indeed … its history of legal threats and lawsuits has earned Louis Vuitton a reputation as a trademark bully.”

* The case is Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 1:2014-cv-03419.