IP Law Daily, TRADEMARK NEWS: Louis Vuitton asks High Court to clarify parody exception in dilution cases, (Jul 19, 2017)

By Cheryl Beise, J.D.

Luxury goods maker Louis Vuitton Malletier, S.A. ("LVM") has filed a petition asking the U.S. Supreme Court to define the standard for determining when use of a famous trademark constitutes a parody for purposes of the fair use exception in trademark dilution cases. LVM contends that the U.S. Court of Appeals for the Second Circuit erred when it determined that a seller of canvas tote bags with the text "My Other Bag …" on one side and a drawing meant to evoke an LVM handbag other side constituted fair use of LVM’s trademarks.

In 2014, LVM filed suit against My Other Bag, Inc. ("MOB"), asserting claims for copyright infringement, trademark infringement, and trademark dilution under New York and federal law. The federal district court in New York City granted summary judgment to MOB on all claims, finding that its use of LVM’s designs constituted nonactionable fair use. In December 2016, the Second Circuit affirmed the district court’s judgment. The Second Circuit found that the designs MOB used on its tote bags were intended as a parody, conveying the humorous message that the owner’s "other bag" was a luxury handbag.

In its petition for certiorari, LVM argues that the Second Circuit’s approach to determining parody for purposes of a trademark dilution claim is overly expansive and conflicts with the test adopted by Fourth Circuit. The federal trademark dilution statute, 15 U.S.C. § 1125(c), as amended by the 2006 Trademark Dilution Revision Act (TDRA), expressly carves out a fair use exception to dilution claims for parodic use of a famous mark.

According to LVM, the Fourth Circuit requires that a parody (1) immediately convey that the famous mark owner's products and the unauthorized products are different and (2) immediately communicate a joke that confirms that the unauthorized use is intended for an expressive purpose. The Second Circuit, on the other hand, did not hold that the differences between MOB’s and LVM’s products were immediately conveyed or that MOB’s use was intended for expressive purposes other than "to free-ride on Louis Vuitton's famous marks." Instead, the Second Circuit held that the parody exception to dilution is available even if the purported parody is "gentle" or "complimentary."

The question presented in LVM’s petition is: "Whether the Second Circuit's test for determining if the unauthorized use of a famous mark constitutes parody is consistent with the Trademark Dilution Revision Act."

LVM maintains that "the Court should grant review to announce a nationally uniform parody test that vindicates Congress's intent to protect trademark owners against the irreversible dilution of their famous and distinctive marks."

The case is Dkt. No. 17-72.

Attorneys: Theodore B. Olson (Gibson, Dunn & Crutcher LLP) for Louis Vuitton Malletier, S.A.

Companies: Louis Vuitton Malletier, S.A.; My Other Bag, Inc.

News: Trademark