Parody consumer-goods brands and fans of tongue-in-cheek humor have reason to be relieved after a federal court of appeals affirmed a grant of summary judgment against luxury handbag maker Louis Vuitton Malletier, S.A. (“Louis Vuitton”), dismissing its lawsuit against My Other Bag, Inc. (“MOB”), a seller of parody canvas tote bags. Louis Vuitton brought suit against MOB in May 2014, alleging trademark infringement, false designation of origin/unfair competition, trademark dilution, and copyright infringement.
These claims arose out of MOB producing canvas tote bags designed to evoke or mimic prominent luxury handbag brands on one side, with text stating “My Other Bag…” on the other. Unlike Louis Vuitton products, which sell for prices ranging into the thousands of dollars, the MOB tote bags sell for between thirty and fifty-five dollars. As the lower court opinion noted, the MOB bags were inspired by the well-known “my other car… ” novelty bumper sticker, which was often placed on inexpensive cars to humorously suggest that the driver also owned a luxury car.
In affirming the grant of summary judgment, the court determined that there was no likelihood of confusion between Louis Vuitton and MOB products, citing the “obvious differences” between the MOB bag “mimicking” of Louis Vuitton’s trademarks, “the lack of market proximity” between the products, and “minimal, unconvincing evidence of consumer confusion.” The court also rejected the trademark dilution claim, explaining that “[t]he 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. . .Indeed, a parody of LV’s luxury image is the very point of MOB’s plebian product.” On Louis Vuitton’s copyright infringement claim, the court reasoned that “MOBs parodic use of LV’s designs produces a ‘new expression [and] message’ that constitutes transformative use” of Louis Vuitton’s copyrighted designs.
Takeaway: Producers of consumer goods that seek to invoke established brands, particularly brands of iconic luxury items, must take care to ensure that any references to other products are done with sufficient care to avoid creating any likelihood of confusion with the established brand.