Is Louis Vuitton "My Other Bag"?: Parody Prevails

*** The writing does not, and is not intended to, constitute legal advice by any means***
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MY OTHER BAG TOTE
USING LV TOILE MONOGRAM
When you want to use another's trademark in connection with your goods and services, you should obtain a license from the trademark owner and pay him or her the licensing fee. This general rule has one notable exception: parody. (For a more detailed explanation on how parody works as a defense, see my earlier post.) In 2016, Southern District of New York (S.D.N.Y.) ruled that My Other Bag did not infringe Louis Vuitton's mark when it used the widely recognized LV monogram for its tote bag. The luxury brand sued My Other Bag under the Lanham Act and trademark dilution under New York law. (As I repeatedly pointed out, there are both federal- and state-level protections for trademark!) S.D.N.Y. ruled that My Other Bag did not infringe the LV toile monogram and thus did not dilute its value. Louis Vuitton appealed the decision, and the Second Circuit affirmed the district court ruling, meaning the appellate court (the Second Circuit) made a legal conclusion that S.D.N.Y. was correct in its judgment. See Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 156 F. Supp. 3d 425, 445 (S.D.N.Y. 2016). So how did this happen? Aren't trademarks supposed to enjoy strong protections in law? Parody defense is quite tricky to play out, but My Other Bag prevailed. I think it's good to review how My Other Bag pleaded its defense because this is a real-life example of how effective advocacy can help you avoid the potential liability in the event of a lawsuit.

A parodic use shields an alleged infringer from liability under the notion of fair use. (See my earlier post to learn what the doctrine of fair use is.) In most cases, fair use acknowledges the act of infringement, but, in this case, the Second Circuit sided with S.D.N.Y in saying that the infringement itself also did not happen. This is what triggered my interest in the case. A quick civil procedure lesson. When an appellate court reviews the decision of a district court, it reviews de novo (fancy Latin term for "anew"), applying the evidentiary standard of "clearly erroneous". Okay, let me explain in plain English. The appellate court will defer to the factual findings of the district court unless they have clear errors, but, when it comes to apply the relevant law (the polaroid balancing test) to those facts, it will start fresh from the beginning.

In making the determination, the Second Circuit emphasized that Louis Vuitton failed to convince the court there is a likelihood of market confusion, one of the dispositive factors in the Polaroid test. See Polaroid Corp. v. Polarad Elecs. Corp., 287. F. 2d 492, 495 (2d Cir. 1961). It stated that "obvious differences in the MOB's mimicking of LV's mark, the lack of market proximity between the products at issue, and minimal, unconvincing evidence of consumer confusion" compelled the judgment in favor of My Other Bag. See Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 674 F. App'x 16, 18 (2d Cir. 2016). As to the parodic nature of the infringement, the court concluded that "[MOB] mimics LV's designs and handbags in a way that is recognizable to convey that MOB's tote bags are not LV handbags" while adding that "the joke on LV's luxury image is gentle, and possibly even complimentary to LV". What the court is essentially saying here is that trademark protects consumers in the market from confusingly similar marks. It thinks that, in light of My Other Bag's parodic use of the LV monogram, My Other Bag did not mislead consumers by explicitly designating its source with the "My Other Bag" logo.

I am not entirely convinced by the court's characterization that market dilution did not occur and even complimentary because Louis Vuitton and My Other Bag serves different customer segments. I'm not sure this holds particularly in the world we live in. Customers are now clever, and the so-called "brand loyalists" also purchase goods from less luxurious retailers. Those who shop at Louis Vuitton also shop at Zara, and there's nothing wrong with such purchasing pattern on the part of a consumer. Plus, trademark is also about protecting the hard-earned goodwill of a brand. A lesson for lawyers? After all, in trademark cases, market confusion is the battlefield with each side submitting their own surveys to prove and disprove the potential confusion. I do not have access to what each side attached as evidence in the affidavit. Some people might even say that, well after all, it's the judge that decides irrespective of the quality of the evidence. This is part correct and part incorrect. Judges make their decisions based on what was pleaded and presented before them. They can't just throw in their own personal opinions to fill the gap. The Second Circuit said the evidence by Louis Vuitton was "minimal and unconvincing", so evidence matters. Even with the right evidence, if a lawyer does not cast the story of a client in the most convincing light, the lawyer can fail. This might be the true lesson of this lawsuit.

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