Followingsuit (Louis Vuitton
Malletier, S.A. v. My Other Bag, Inc., 1:2014-cv-03419 ) from
SDNY, the United States Court of Appeals for the Second Circuit affirmed parody
as a successful defense against an allegation of trademark dilution wherein the
defendants product evoked a famous brand's mark, but sufficiently made clear
the lack of association/consumer confusion.
The defendant, My Other Bag (MOB), is an LA based maker of
inexpensive canvas tote bags usually with a play on a well-recognized brand
bag. In this particular matter, these bags had
on one side the letters MOB intertwined in a cartoonish form of Louis Vitton's
(LV) famous toile mark. On the other side of the bag, the words MY OTHER
BAG were printed clearly in a large font. Louis Vitton sued MOB for
trademark infringement, dilution and common law copyright infringement.
In its
defense, MOB stated that its line of bags is inspired from the "novelty
bumper stickers, which can sometimes be seen on inexpensive cars claiming that
the driver's "other car" is an expensive luxury car.." (See Memo).
The bags were a play on the fact that these were not the LV bags, infact they were
meant to be the "workhorse totes" meant to carry groceries and dirty
gym clothes, which one wouldn't normally do in a LV bag. Further, the MOB
bags retail at $35-50 whereas LV bags cost thousands of dollars and would
therefore not be considered a market replacement of the LV bags. Thus, market
proximity for the two brands was non-existent.
A summary
judgement was granted in favor of the defendant finding that MOB had
sufficiently proved its parody defense. However, it is important to note that
while parody is a valid defense for trademark dilution, it is not a ground for
trademark registration.
