Louis Vuitton Seeks Rehearing in Second Circuit Trademark Infringement Case
01/10/2017As we reported recently, the Second Circuit sided with parody-handbag producer My Other Bag in a trademark-infringement suit launched by high-end fashion brand Louis Vuitton. The Second Circuit had upheld a district court finding that the use of the Louis Vuitton mark on inexpensive canvas tote bags was transformative parody and protected as fair use.
Last week, Louis Vuitton requested an en banc hearing, arguing that the Second Circuit panel erred in upholding the lower-court ruling, which it claims, was based solely on its subjective view that the bags were intended as a joke. Judge Furman, in tossing Louis Vuitton’s claims, had noted that Louis Vuitton’s sense of humor (or lack thereof) was irrelevant to the parody defense.
First, citing Second Circuit precedent, the brand argued that satire of another company’s trademark for commercial purposes is insufficient to meet the legal requirements for parody, particularly where the claim of parody “comes only after-the-fact and is contrary to record evidence.” Rather, the court should look to the alleged infringer’s intent and consumer perception to determine whether the use of the marks qualifies as parody. My Other Bag, it notes, markets the totes not as parody, but as “cute and stylish” to “consumers who owned or aspired to own designer handbags.”
Second, Louis Vuitton argues that the question of commercial impression is a question of fact for the jury. Both the district court and the Second Circuit panel, it argues, decided the themselves, disregarding conflicting evidence from which a jury could conclude differently. A judge should not substitute his or her own judgement for that of a jury unless there are no issues of material fact, according to the Louis Vuitton request.
Finally, Louis Vuitton argues that the panel’s holding undermines the purpose of the Trademark Dilution Revision Act, which applies exclusively to famous marks. My Other Bag, it argues, would not have been able to sell its totes if it had not affixed the designer labels to them. Exploiting famous marks for one’s own gain—is precisely the harm the Act was designed to remedy.
We will continue to monitor the case for further developments, but Louis Vuitton’s best option may well be, as Judge Furman suggested in tossing the case, to simply smile or laugh and move on.
Art Law Blog