No Love for Louis in Trademark Parody

Posted by Kaustubh Nadkarni on January 11, 2016

Louis Vuitton Malletier SA, commonly referred to as Louis Vuitton or LV is a renowned fashion powerhouse. It is in the business of selling extravagant leather products, including expensive handbags. Louis Vuitton sued Designer Tara Martin for her designer line, “My Other Bag,” which comprise of cotton totes decorated with imagery meant to mimic designer handbags from Louis Vuitton. However, being that Louis Vuitton is an aggressive trademark litigant, the U.S. District Court noted that it is “better to accept the implied compliment in a parody and to smile or laugh than it is to sue.”

My Other Bag is a designer line launched by Tara Martin in 2011.  The name of the designer line is similar to the classic “my other car” bumper stickers car owners display to older, inexpensive automobiles to sarcastically tell others that their other car is a much more expensive, luxury brand automobile. Specifically, the bags, made of canvas, say “My Other Bag” on one side and then have a drawing of an iconic designer bag on the other. The bags typically retail between $35 and $55, significantly lower in cost than a leather handbag sold by Louis Vuitton.

Similarly, the designer line was created as a reusable grocery bag meant to “playfully parody the designer bags we love.” A parody, for trademark purposes, is “a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark's owner.

However, Louis Vuitton, a vehement trademark enforcer saw nothing amusing or entertaining in this matter. They sued for infringement and dilution of their famous Louis Vuitton mark.

Much to Louis Vuitton’s chagrin, however, the Court felt otherwise. U.S. District Court Judge Jesse M. Furman noted in the order, “MOB’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.”

Furthermore, the Judge went on to write, “Louis Vuitton Malletier SA, the maker of Louis Vuitton bags, is perhaps unfamiliar with the 'my other car' trope. Or maybe it just cannot take a joke.”

By no means a newbie to parody defense, Louis Vuitton, in 2007, had lost their trademark infringement case to parody defense. The case was Louis Vuitton Malletier SA v. Haute Diggity Dog LLC, in which the Fourth Circuit applied parody as a defense to trademark infringement. Specifically, in that case, a small manufacturer of chew toys for dogs created a “Chewy Vuitton” toy, which imitated the well-known trademark and trade dress of Louis Vuitton. The Court held that the defendant was not liable for trademark infringement because its use of the Chewy Vuitton for dog toys was an effective parody of Louis Vuitton. Since then, parody has been raised as a defense in a variety of trademark infringement cases to varying success, including the present case.

Accordingly, in the present case, after a favorable ruling in the District Court, Tara Martin, the designer and CEO went on to say, “People shouldn’t be afraid to make a joke for fear of a trademark lawsuit. Hopefully this decision sends that message.”

Topics: Intellectual property, Intellectual Property Law, Parody, Trademark Infringement, Trademarks