Following a fight over My Other Bag (“MOB”)’s parody totes that lasted more than 3 years, was filled with blow-after-blow from the defendant (which characgertized the brand as a litigious bully and a “troll”) and judges who chastised Louis Vuitton over its failure to “take a joke,” and almost made it all the way to the Supreme Court, Louis Vuitton has been handed a win in a separate but related lawsuit that it filed against a South Korean beauty brand.
The background is this: in 2014, Louis Vuitton filed suit against MOB – a small Los Angeles-based brand known for its affordable designer bag-on-a-canvas bag styles, which include Balenciaga, Proenza Schouler, Celine, and Louis Vuitton lookalikes – alleging trademark infringement and dilution, and copyright infringement, among other claims.
According to Louis Vuitton’s failed bid for Supreme Court consideration, which came after losses before the district court and the 2nd Circuit Court of Appeals, it “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.”
As a result, “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 Paris-based luxury brand argued
MOB responded from the outset by arguing that it should be shielded from Louis Vuitton’s trademark and copyright liability claims because its bags amount to parodies – a play on the well-known “my other car …” joke by suggesting the consumer’s “other bag” is a Louis Vuitton bag. And both the district court and the court of appeals agreed, prompting Louis Vuitton to file a petition for writ of certiorari in July 2017, asking the Supreme Court to hear the case.
The Face Shop’s infringing products
The Louis Vuitton v. My Other Bag case came to a close early this year when Jesse M. Furman put an end to Louis Vuitton’s losing streak and held that the brand is not required (under the Lanham Act or the Copyright Act) to pay MOB’s nearly $1 million legal bill. Despite MOB’s assertions that the case was “exceptional” enough to warrant a court order that Louis Vuitton foot the bill – as demonstrated by what MOB called “the chilling effects of … the bullying tactics on display in this litigation” – the court denied a motion by MOB for attorneys‘ fees and costs.
Still underway in the background following Louis Vuitton’s $1 million victory is the different trademark infringement case, one that Louis Vuitton filed against The Face Shop in connection with a collaboration collection it released with its MOB.
Louis Vuitton filed suit against the skincare and cosmetics manufacturer in its native South Korea, asserting that much like MOB’s problematic bags, The Face Shop’s collab made use of packaging that contained illustrations of Louis Vuitton’s trademarks. In its defense, The Face Shop pointed to MOB’s victory in a New York federal court, and claimed that like MOB’s bags, its makeup compacts and canvas dust bags also amounted to parodies.
The Seoul District Court, however, was not as convinced as those in the U.S. In addition to deciding that MOB is not widely known to Koreans (thereby, weakening its claim that consumers will not be confused about the source of the cosmetic products), the court further held earlier this month that there was “a stark difference” in how The Face Shop used Louis Vuitton’s designs compared with My Other Bag’s parody products.
For instance, while MOB included text on one side of each of its bags that read, “My Other Bag …”, The Face Shop’s products contained no such parodic element. In short: the Korean cosmetics brand’s intention to parody the luxury brand was not clearly depicted in connection with its collaboration with MOB.
As a result, Seoul’s Central District Court ordered The Face Shop to immediately and permanently cease all manufacturing, advertising, and sales of the infringing products and to pay nearly $45,000 in fines to Louis Vuitton.
The Face Shop was not immediately available for a comment.