Louis Vuitton recently petitioned the U.S. Supreme Court to review a Second Circuit ruling that certain handbags are fair-use parodies of Louis Vuitton products, and therefore do not give rise to liability for trademark dilution by blurring. In its petition, Louis Vuitton contends there is a split of authority between the Second and Fourth Circuits regarding parody as a fair-use defense to dilution.
Louis Vuitton is the owner of famous trademarks “that immediately bring… to mind Louis Vuitton as the sole source of handbags and other stylish, high-quality goods bearing its marks.” My Other Bag, Inc. offers handbags with images of Louis Vuitton’s famous marks reproduced on one side, and the phrase “My other bag” inscribed on the back.
Under the 2006 Trademark Dilution Revision Act (“TDRA”), the owner of a famous mark may sue for “dilution by blurring”, which the statute defines as an “association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” 15 U.S.C. § 1125(c)(2). The TDRA provides a list of six factors to assess whether a use is likely to impair the distinctiveness of a famous mark. Id. In addition, the statute codifies a fair-use defense for uses “identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods and services of the famous mark owner.” Id., § 1125(c)(3)(A)(ii).
In December 2016, the Second Circuit affirmed a lower court’s summary judgment ruling in favor of My Other Bag, holding that “[a]t the same time [MOB’s bags] mimic LV’s designs and handbags in a way that is recognizable, they do so as a drawing on a product that is… a conscious departure from LV’s image of luxury.” “Indeed, a parody of LV’s luxury image is the very point of MOB’s plebian product. That distinguishes this case from ones cited by LV where a trademark was used merely to ‘promote’ or ‘sell’ goods and services[.]” The court also pointed out “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.”
According to Louis Vuitton, however, the Second Circuit’s analysis is impossible to reconcile with the Fourth Circuit’s decision in Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). Louis Vuitton also thought the Fourth Circuit had applied a stricter standard to the parody defense, requiring that: (1) the use conveys two simultaneous contradictory messages (that it is the original, and also not the original, but a parody); (2) the differences between the products be immediately recognizable and; (3) the unauthorized use immediately conveys a joke confirming that the product was designed for expressive purposes.
Although the Second Circuit ostensibly applied the same parody analysis, it failed to impose any requirement that the differences in the products be immediately recognizable or that the unauthorized uses immediately convey a joke. Moreover, Louis Vuitton argues, both Circuit Courts have erroneously conflated the tests for trademark infringement and dilution. Although the TDRA requires a likelihood of dilution, likelihood of confusion is irrelevant; injunctive relief is available “regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.” 15 U.S.C. §1125(c)(1).
Louis Vuitton now requests that the Supreme Court overturn the Second Circuit’s ruling and resolve the purported circuit split in trademark parody analysis. These cases have wide-ranging implications for stakeholders in luxury brands as the courts continue to define the contours of “blurring by dilution” under the TDRA.
The case caption is Louis Vuitton Mallentier, S.A. v. My Other Bag, Inc., U.S., No. 17-72. K&L Gates will continue to monitor the case.
By: Shamus J. Hyland