Monday, January 11, 2016

My other district court decision is a loss: LV loses parody bag case

Louis Vuitton Malletier, S.A. v. My Other Bag , Inc., No. 14-CV-3419 (S.D.N.Y. Jan. 8, 2016)
The Hon. Jesse Furman again demonstrates his good sense.  My Other Bag sells canvas tote bags with the text “My Other Bag . . .” on one side and drawings meant to evoke iconic handbags by luxury designers, such as Louis Vuitton, Chanel, and Fendi, on the other.  The court identified the totes, and the company name, as “a play on the classic ‘my other car . . .’ novelty bumper stickers, which can be seen on inexpensive, beat up cars across the country informing passersby — with tongue firmly in cheek — that the driver’s ‘other car’ is a Mercedes (or some other luxury car brand).”  These bumper stickers riff on expectations about car drivers and luxury cars, and MOB’s totes were “just as obviously a joke.” 

LV can’t take a joke, and sued for dilution, trademark infringement, and copyright infringement.  The court granted summary judgment.  MOB’s bags have drawings of various bags on them; the ones at issue here “use simplified colors, graphic lines, and patterns that resemble Louis Vuitton’s famous Toile Monogram, Monogram Multicolore, and Damier designs, but replace the interlocking ‘LV’ and ‘Louis Vuitton’ with an interlocking ‘MOB’ or ‘My Other Bag.’”  MOB says its products are “[e]co-friendly, sustainable tote bags playfully parodying the designer bags we love, but practical enough for everyday life,” and they sell for $30 and $44.  Its marketing touts the idea that high-priced designer bags are inappropriate for dirty gym clothes or groceries, but its casual canvas totes are fine for that: “[T]his luncheon worthy designer bag doesn’t fit in at the gym, BUT My Other Bag . . . DOES . . . .”
Dilution: An introductory note: the court says, based on statements in other cases, that the NY and federal analyses are basically the same, although NY does not require fame.  Under both laws, analysis “‘must ultimately focus on whether an association, arising from the similarity between the subject marks, impairs the distinctiveness of the famous mark’— that is, the ability of the famous mark to serve as a unique identifier.”  However, it is hard to reconcile those statements with Deere v. MTD, which very clearly would have been a defense victory under federal law given the federal exclusions.  (I have seen suggestions to the contrary but I don’t find them credible; even Hyundai-style analysis wouldn’t condemn the ad in Deere.)  Deere, of course, predated the FTDA and the TDRA, so the Deere court was not in a position to consider the initial or revised exclusions to federal dilution. 
Takeaway: Even in New York, with perhaps the most developed history of state-law dilution claims, courts interpret state and federal dilution law as similarly as possible.  I don’t think this is just a matter of not wanting to do two different analyses/judicial economy.  Since we don’t have any idea what dilution is, courts are understandably leery of trying to implement two different strained definitions.  I do wonder what this implies for future Deere-type cases brought under NY and federal law—arguably, given Deere’s scope, this is one of them, given that it involves competitor’s alteration of the mark. If the reasoning for keeping the analysis the same is that federal dilution law has the same justification as state dilution law (query why one requires fame and the other doesn’t, then), then even later federal law can shed light on the proper interpretation of state law, I suppose, meaning that Deere should come out differently today.  (Also, to the extent that state law tries to make non-false/misleading comparative advertising unlawful, I think it’s unconstitutional, also meaning that Deere should come out differently.)
OK, so LV’s theory is dilution by blurring.  MOB argued that federal law requires “use as a mark” for a dilution claim, and McCarthy agrees, but the court didn’t need to reach that issue because MOB won anyway.  First, federal law excludes fair use “other than as a designation of source for the person’s own goods or services,” including “identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.”  Parody is “a simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner,” conveying the contradictory messages that it is and isn’t the original.
As a matter of law, MOB’s bags were fair use.  They communicated a lack of connection to the original producer with a joke about how this bag wasn’t a Louis Vuitton bag.  Combined with the “stylized, almost cartoonish renderings” of LV bags on the totes, the joke created “significant distance between MOB’s inexpensive workhorse totes and the expensive handbags they are meant to evoke.  LV’s exclusive image was, at least in part, the brunt of the joke—LV’s bags are treated revently to communicate status, while MOB’s totes are utilitarian.
LV argued that the bags weren’t really a parody, and that the company’s CEO stated that she never intended to disparage LV.  As in Hyundai, any humor was, according to LV, just part of a larger social commentary.  McCarthy doesn’t like Hyundai, and neither does Judge Furman, because the Hyundai court failed to notice the distinction between association and dilution.  But in any event, Hyundai is distinguishable: “it is self-evident that MOB did mean to say something about Louis Vuitton specifically.”  LV’s handbags are integral to the joke; that the joke is also about society’s obsession with status is not disqualifying.
Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410 (S.D.N.Y. 2002), was a better guide.  That case blessed a pet perfume called Tommy Holedigger, which resembled a Tommy Hilfiger fragrance in name, scent, and packaging.  Though the defendant’s general partner had difficulty expressing the parodic content of his communicative message, parodies do convey a message; “[t]he message may be simply that business and product images need not always be taken too seriously; a trademark parody reminds us that we are free to laugh at the images and associations linked with the mark.” 
LV relied on Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979), to argue that the totes couldn’t be be a parody because they didn’t need to use Louis Vuitton’s trademarks for the parody to make sense.  (The court doesn’t address the otherwise outdated/deprecated status of Dallas Cowboys Cheerleaders; wonder what effect the analysis in In re Tam would have here?)  True, MOB could use any well-known luxury handbag brand to make its points.  But, while you can talk about sex in athletics without talking about the Cowboys Cheerleaders, the tote bags here wouldn’t make any sense if they just depicted a generic handbag: “my other bag . . . is some other bag.”  At least when a parody must evoke one of a finite set to make its point, the parodist can choose; otherwise it could be excluded from all under LV’s rationale.
LV also argued that there couldn’t be fair use because MOB used LV’s trademarks “as a designation of source for [MOB’s] own goods.” Given the overall design of the tote bags—identical, stylized text on one side, different caricatures on the other—and the fact that the bags used a range of luxury brands, the court disagreed.  LV’s marks were the target of the joke, not the designation of source.  LV cited MOB’s CEO’s deposition where she was asked whether she agreed that the LV pictures with their markings “are depictions . . . you use in order for people to understand that the product comes from you, My Other Bag.”  She responded affirmatively: “People know that the product . . . our tote bags with those depictions come from My Other Bag.”  But that’s not an admission of use of LV’s marks to identify the source of MOB’s bags.  In context, when counsel was attempting to establish likely confusion, her sole point was that consumers weren’t likely to be confused.
Even if MOB were using LV’s marks as a designation of source, MOB would still win summary judgment, because association caused by parody strengthens the uniqueness of a famous mark, rather than blurring it.  Association is necessary to, but not sufficient for, blurring.  The statute explicitly requires a likelihood that the association “impairs the distinctiveness of the famous mark.”  Haute Diggity Dog persuasively explains why parody is unlikely to do so—parody requires the distinctiveness of the famous mark to be maintained.  The mimicry involved in parody is very different from hypothetical “Louis Vuitton aspirin tablets.”
Trademark infringement: also a loser, for many of the same reasons.  The strength of LV’s marks, in a parody context, made confusion less likely, so the strength factor favored MOB or at most was neutral.  Similarity also didn’t favor LV given the presence of joke signals in the cartoonish image, the text, and the workhorse style of the canvas bag.  Proximity of the products/bridging the gap favored MOB because LV isn’t going to make cheap canvas bags, though it does make “casual” and canvas bags. Its handbags cost hundreds or thousands of dollars, and were sold exclusively in LV’s stores and on its website.  MOB’s totes are cheaper and sold elsewhere—“in no meaningful sense ‘competitive’ with Louis Vuitton’s designer handbags.” 
Nor was there evidence of actual confusion.  LV pointed to a handful of descriptions of the MOB bags as “LV” bags.  Even taking those literally, a handful wasn’t enough to show likely confusion, given the fact that the bags had been on the market for several years.  But there was no reason to take them literally, since the speakers were plainly using “LV” as a shorthand to describe the designs evoking LV bags: they showed that consumers were getting the joke.
MOB’s intent to parody wasn’t bad faith.  Its benefit from using the marks arose from the humorous association, not from confusion.  The sad-sack 2d Circuit “quality” factor, which should really just be put out of its misery, also didn’t favor LV, because LV didn’t show that the lower quality of MOB totes risked tarnishing its mark, nor were the totes of the same quality as LV bags and thus more likely to cause confusion.  Consumer sophistication/degree of care favored MOB because of the substantial price of LV bags, and because “MOB’s gimmick would be obvious to even its most unsophisticated customers, as one whole side of the tote bag is blank except for the words ‘My Other Bag . . . .’”  The obviousness of the joke would protect even a minimally prudent consumer.
LV hypothesized post-sale confusion among observers who saw only one side of the bag and didn’t notice the replacement of LV with MOB in the logo.  But the Second Circuit generally treats post-sale confusion as actionable only in the context of “knockoffs.”  Plus, “no 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 MOB’s tote bags.”  Furthermore, likely confusion isn’t assessed using “a hypothetical scenario that is most likely to result in confusion.” The overall impression of reasonable consumers is key, and the overall impression/context certainly includes both sides of the bag.
Copyright infringement: Nope, this couldn’t substitute for trademark.  Transformative uses can be commercial, and usually copy popular, expressive works.  MOB used a reasonable amount in relation to its aim.  “Finally, although MOB’s totes are, in an abstract sense, in the same market as Louis Vuitton’s handbags, its totes do not ‘serve[] as a market replacement for’ Louis Vuitton’s bags in a way that would make ‘it likely that cognizable market harm to [Louis Vuitton] will occur.’”

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