Trademark Parody – Judge Suggests that Louis Vuitton Needs to Get a Sense of Humor
Louis Vuitton sells luxury products that command very high prices. Its trademarks are very well known and they are extremely valuable. This makes LV a tantalizing and frequent target of counterfeiters. Customs and Border Patrol does what it can to stem the tide of counterfeit products entering the US. CBP reports that, in 2014, it made more than 23,000 seizures of counterfeit goods with an estimated retail value in excess of $1.2 billion dollars. It is hard to estimate, however, the value of counterfeit products that slip through every year.
The fame of the LV trademarks also makes them a target for a different kind of trademark assault – Parody. Sometimes third parties use trademarks that bring to mind the famous LV marks but, at least in some cases, the third party marks do not create a likelihood of confusion. For example, a California company, My Other Bag, started selling canvas totes screen-printed with renderings of LV handbags on one side, thus:
And the words My Other Bag on the other side, thus:
LV took offense and went on the offensive by filing a suit in New York for trademark infringement and trademark dilution. In a decision granting MOB’s motion for summary judgment on all counts, the Court began its analysis by defining parody as “a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized 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.”
The Court accepted MOB’s claim that its My Other Bag line “was inspired by novelty bumper stickers, which can sometimes be seen on inexpensive cars claiming that the driver’s ‘other car’ is an expensive, luxury car, such as a Mercedes.” The Court noted that the MOB products are relatively cheap at approximately $30 to $55 each, a fraction of the cost of even the cheapest Louis Vuitton bag. Further, the Court reasoned that “the image of exclusivity and refinery that Louis Vuitton has so carefully cultivated is, at least in part, the brunt of the joke.” The fact that the canvas bag was so obviously a parody also led to the Court to reject LV’s trademark infringement and dilution claims. As the court held, “[N]o reasonable observer is likely to infer from the cartoon-like bag-within-the-bag design and the juxtaposition of [MOB’s] basic, canvas tote with the exclusive, luxury status of Louis Vuitton that Louis Vuitton sponsors or otherwise approves” of the tote bags. Ouch. It got worse. The Court suggested that Louis Vuitton “cannot take a joke.”
Emboldened, MOB made an application to the Court for an award of attorney fees. Not surprising, I suppose. This case was decided on summary judgment and the judge deemed LV’s arguments to be entirely meritless. However, I’ll admit to being surprised that the application sought an award of $398,821.94 for attorney fees and expenses for a case that was decided on summary judgment. (The highest hourly billing rate reported in the application was $750.) No decision yet.
This case makes me wonder why anyone would risk everything to parody a famous brand. Although MOB did not have a lot of resources, it had to know that LV was likely to object – strenuously – as it did in the Chewy Vuitton case. (LV was unsuccessful in that case, too. An order granting the defendant’s motion for summary judgment was affirmed on appeal. Estimates put legal fees at $300,000).
Maybe I lack a sense of humor, a sense of adventure, or both. I would have advised MOB to stay away from its parody of LV bags. How much o f a sense of humor can a company like LV have if it is spending millions of dollars to keep counterfeiters at bay? The risk of being challenged is high. The risk of losing is real. In any case, exposure to hundreds of thousand of dollars in legal fees is practically certain.