Supreme Court decision not to review Louis Vuitton s requested appeal against upstart parody tote bag maker My Other Bag allows

Transcription

1 3/15/2018 Supreme Court decision not to review Louis Vuitton s requested appeal against upstart parody tote bag maker My Other Bag allows the bag maker to use Lou THE FASHION INTELLECTUAL PROPERTY BLOG By Lewis Roca Rothgerber Christie O C TO B E R 3, BY G A RY N E L S O N A N D M I K E KO P LOW Supreme Court decision not to review Louis Vuitton s requested appeal against upstart parody tote bag maker My Other Bag allows 1/5

2 the bag maker to use Louis Vuitton s designs For years, designer handbag maker Louis Vuitton has been entrenched in trademark litigation against the Los Angeles based one-woman tote bag maker My Other Bag. My Other Bag sells relatively inexpensive canvas tote bags depicting caricatures of expensive designer handbags on one side with the text My Other Bag on the other. One such bag depicts the Louis Vuitton pattern, shown below. As explained by My Other Bag s founder and CEO Tara Martin, the purpose of the bags is to provide stylish ecoconscious reusable bag options to customers. Not wanting to carry groceries in expensive handbags, Ms. Martin describes that she developed My Other Bag to playfully parody expensive designer bags that certain consumers, with eclectic tastes, love. The difference being: practicality. In 2014, Louis Vuitton led suit against My Other Bag in U.S. District Court for the Southern District of New York, alleging that My Other Bag s use of Louis Vuitton s designs constituted willful trademark infringement, copyright infringement, and diluted the value of the famous Louis Vuitton designs. The Southern District of New York denied Louis Vuitton s claims, holding that My Other Bag s use 2/5

3 was an obvious parody and thus fair use of the trademarks. The court stated that My Other Bag s use of Louis Vuitton s marks in service of what is an obvious attempt at humor is not likely to cause confusion or the blurring of the distinctiveness of Louis Vuitton s marks; if anything, it is likely only to reinforce and enhance the distinctiveness and notoriety of the famous brand. Ironically, a common justi cation articulated by many infringers. Unsatis ed with this result, Louis Vuitton appealed the decision to the United States Court of Appeals for the Second Circuit. The Second Circuit af rmed the lower court s ruling in favor of My Other Bag, nding that parody of Louis Vuitton s luxury image is the very point of My Other Bag s tote bags. Still yet unsatis ed, Louis Vuitton sought to further appeal to the Supreme Court by ling a petition for writ of certiorari. Louis Vuitton argued that the Supreme Court should hear the challenge because it had profound importance and far-reaching signi cance for countless owners of famous and distinctive marks that, like Louis Vuitton, depend on the protections of [the Federal trademark dilution statute] to safeguard their intellectual property against improper dilutive uses. Louis Vuitton believed that the decision by the Second Circuit leaves famous mark owners vulnerable to widespread dilution through the production of imitation products marketed under the guise of parody. Despite Louis Vuitton s plea, the Supreme Court recently announced that it would not hear Louis Vuitton s appeal. As is common for Supreme Court denials, the Court denied the petition without comment. As a result, the decision by the Second Circuit is upheld, and My Other Bag s use of Louis Vuitton s trademarks 3/5

4 without a license is permitted. Emboldened by these results, My Other Bag has led a request for attorneys fees before the district court in excess of $900,000 for work including the appeals. My Other Bag argues that the case is exceptional and it should be awarded attorneys fees because the case was manifestly lacking in merit and because Louis Vuitton did not le the case to win on the merits. Rather, My Other Bag claims that the purpose of the suit was to bully a one-woman business that lacked the resources to ght the infringement claim. The request for attorneys fees is currently pending. Despite this being a parody case, no one appears to be laughing. Share this: Facebook 6 LinkedIn Twitter Google Pocket Print Like this: Like Be the first to like this. Related Seriously: One can use another's trademark on products to make a joke. Defendant makes cheap looking handbags with the phrase MY OTHER BAG...af xed to one Third-Party Registrations and Uses for Marks Similar to the Cited Registered Trademark Are Fashion Industry May be Left Defenseless Against Infringers October 25, 2016 In "Manufacturing" 4/5

5 September 2, 2016 In "TTAB" Again Deemed Insuf cient to Carry the Day October 30, 2017 In "Trademark" C O P Y R I G H T 5/5