The United States Court of Appeals for the Second Circuit, New York on 22nd December, 2016 scrapped a Trade Mark lawsuit filed by Louis Vuitton against a small Company selling cheap handbags that were a replica of the Designer’s acclaimed brand.
A Brief of the case is summarised as follows:
Louis Vuitton – The world’s most valuable fashion house in Paris filed a Trademark infringement lawsuit against My Other Bag (MOB), a small Company based in Los Angeles, United States. The latter continued to use the infringed brand despite several requests made to them from Louis Vuitton to cease their production and marketing.
The present case draws an analogy to the relation between an image and the reality. It is interesting to note the stark similarity between the patterns rendered in these bags. Louis Vuitton had claimed that MOB’s marketing strategy invokes and emphasises the fashionable character of its products and its intent to create an association with Louis Vuitton. Their principal claim was that MOB is likely to create confusion in the marketplace, as consumers are likely to believe that MOB’s designs are authorised or endorsed by Louis Vuitton, or that the international design house is associated with MOB’s products in some way.
MOB responded the lawsuit by holding that its bags are mere parodies of Louis Vuitton’s and thus, MOB should not be liable for Trademark infringement.
In January 2016, the US District court in the Southern District of new York decided against the claims of Louis Vuitton stating that they should “accept the implied compliment in parody” and that “MOB’s use of Louis Vuitton’s marks in service of what is an obvious attempt at humour 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.”
It is self-evident that MOB did mean to say something about Louis Vuitton specifically. That is, Louis Vuitton’s handbags are an integral part of the joke that gives MOB its name and features prominently on every tote bag that MOB sells. In arguing otherwise, Louis Vuitton takes a constricted a view of what can qualify as a parody.
The Court expounded that parody is “a simple form of entertainment conveyed by juxtaposing the irrelevant representation of the Trade Mark with the idealised image created by the mark’s owner”. Moreover, a parody “must not only differentiate the alleged parody from the original but must also communicate some articulable element of satire, ridicule, joking or amusement.”
Applying the above standard, the court established that the parody resorted by MOB was obvious and the whole point was that the tote bags were not the luxury goods being parodied. The fact that the canvas bag was so obviously a parody also led to the court’s rejection of Louis Vuitton’s trademark infringement claim. The court characterised that MOB had used Louis Vuitton’s trademark in fair use. The court also noted more than once that MOB’s products are relatively cheaper, at a fraction of the cost of even the cheapest Louis Vuitton bag.
Louis Vuitton filed an appeal against the said decision which was not admitted by the The United States Court of Appeals for the Second Circuit, New York.
It is seen that parodies are not an actionable source of Trademark infringement or dilution. Parody is probably one of the oldest and most beloved ways in our culture to address social, economic, and political issues. As observed in the present case, a key defense against the claims of Trademark infringement and dilution is parody, which essentially cites that no likelihood of confusion because the parody will be recognised as such, thereby allowing MOB to use Louis Vuitton’s Trade Mark to some extent. It is seen that MOB’s product is a mere parody of Louis Vuitton’s iconic handbag and, as such, did not violate Louis Vuitton’s Intellectual property rights.
The present decision throws light on the most essential values embedded in the Universal Principles of Natural Justice to protect and fight for the freedom of speech. People shouldn’t be afraid to make a joke for fear of a trademark lawsuit. MOB’s use of Louis Vuitton’s marks in service of what is an obvious attempt at humour is not likely to cause confusion or the blurring of the distinctiveness of Louis Vuitton’s marks.