Following a January ruling in favor of My Other Bag from the Southern District of New York in a trademark infringement and dilution case initiated by Louis Vuitton, the Paris-based design house filed to appeal the court’s decision to the Second Circuit Court of Appeals. On Thursday, the Second Circuit Court of Appeals took a tough stance against Louis Vuitton and dismissed the case.
The Second Circuit’s three-judge panel, consisting of Judges Gerard E. Lynch, Guido Calabresi and Reena Raggi, affirmed the Southern District of New York’s January ruling that the inexpensive “My Other Bag” canvas totes, which bear cartoon imagery of Louis Vuitton trademarks, are, in fact, protected by the parody defense. As such, My Other Bag is not on the hook for trademark or copyright infringement or dilution.
Writing for the court, Judge Gerard E. Lynch stated: “A parody must convey two simultaneous — and contradictory — messages: that it is the original, but also that it is not the original and is instead a parody.’ MOB bags do just that. At the same time they mimic LV’s designs and handbags in a way that is recognizable, they do so as a drawing on a product that is such a conscious departure from LV’s image of luxury — in combination with the slogan ‘My Other Bag’ —as to convey the image that MOB tote bags are NOT LV handbags.”
He continued on to note that “the fact that the joke on LV’s luxury image is gentle, and possibly even complimentary to LV, does not preclude it from being a parody… Indeed, a parody of LV’s luxury image is the very point of MOB’s plebeian product.”
Of the ruling, My Other Bag founder, Tara Martin, told TFL …
My legal team and I are overjoyed about the court’s opinion. They got it right, as did the district court earlier this year. That being said, while it is a “win,” as I can continue to make and sell the totes, the toll this lawsuit has taken on not only the business but on me personally has been astronomical. This three year battle with LV has put me through an inordinate amount of financial and personal hardship all the while knowing their case was unreasonable. We’ll be seeking attorneys’ fees, and I hope this serves as a deterrent against the filing of frivolous lawsuits. All that said, the court system came through, and we’re extremely pleased.
The decision comes on the heels of the parties’ oral arguments, which took place earlier this month. In connection with the parties’ arguments, Judge Lynch seemed just as skeptical of Louis Vuitton’s protectionist stance, as the lower court did (U.S. District Judge M. Furman notoriously handed down a harsh, 31-page ruling earlier this year, in which he stated, “In some cases, it is better to ‘accept the implied compliment in [a] parody’ and to smile or laugh than it is to sue. This — like Haute Diggity Dog (and, arguably, Hyundai) — is such a case.”). More recently, Lynch told Louis Vuitton’s counsel in connection with the My Other Bag totes, “This is a joke. I understand you don’t get the joke. But it’s a joke.”
Still to be determined by the court, the amount of attorney’s fees that will be awarded to My Other Bag.
* The case is Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 1:2014-cv-03419.