Charles Caleb Colton (and later, Oscar Wilde) is famous for the phrase, “imitation is the sincerest form of flattery.” In the world of trademark, such “flattery” happens often. But there is a bright line between diluting or infringing a trademark and engaging in parody. The latter is what happened in the case of Louis Vuitton v. My Other Bag Inc.

Louis Vuitton is one of the oldest and most valuable fashion houses in the world. When you see a bag with LV’s signature pattern stamped on the side, you are supposed to think of luxury (or a hip-hop video circa 2009). There’s a certain je ne sais quoi in the mark that is meant to convey the status and wealth of its wearer. This has helped the LV brand grow, but it has also spurred a whole industry of knock-offs (which, in LV’s case, can be found on any street corner in downtown D.C.).

 

While most of what the fashion industry creates doesn’t qualify for intellectual property protection, there are a few exceptions. In this case, there’s special protection awarded to the trademark, “LV,” which is part of that signature pattern. Because of its privileged status as a protected mark — which doesn’t expire as long as it’s in use – there are a number of tools the company can use to enforce its sole rights over its brand, including marks for color, shape, letter or design.

Furthermore, there are avenues other than simply the U.S. District Court where a mark may be litigated, including state or an administrative court, such as the International Trade Commission, which has the power to issue the terrifying “exclusion order.” An exclusion order is an injunction that can bar a company or companies from importing to the United States articles deemed to infringe trademarks. An ITC proceeding only takes a little over a year to conclude.

Indeed, because of this stronger protection, the incorporation of designers’ marks into the goods they produce has become ubiquitous. It’s a prominent feature of almost every designer to mass-market bag, from Hermès to Coach. Which brings us to the “My Other Bag” case, wherein Louis Vuitton is seeking to enforce its rights against this “knock off”:

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Basically, it’s one of those reusable grocery store bags with a deliberately bad version of the LV pattern, here rendered as “MOB” for “my other bag.” The joke plays on the 1980s trope of bumper stickers that would be affixed to decidedly humble automobiles declaring “my other car is an X” (Mercedes, Ferrari, Cadillac, etc.).

Earlier this year, the U.S. District Court for the Southern District of New York denied a motion by Louis Vuitton for summary judgment, in which a judge rules on a point of law to save the expensive hassle of a full trial. The claims stipulated were dilution, trademark infringement and copyright infringement. But as Judge Jesse M. Furman joyfully noted, LV ought to “accept the implied compliment in a parody” and to smile or laugh rather than sue. MOB now is petitioning the court for LV to pay its’ attorney fees.

A group of crusading law professors, led by Chris Sprigman of NYU Law and Rebecca Tushnet of Georgetown University Law Center, recently filed an amicus defending MOB and their assertion of parody as a defense. They write:

Trademark law is designed to allow consumers to identify the source of products and services, not to control how they think; copyright is designed to encourage speech, not to suppress it. This Court should not assist LV’s attempts to suppress what LV views as MOB’s failure to provide LV with sufficient deference.

Because trademark is applicable both on the state and federal level, definitions of what constitutes parody differ. The Lanham Act, which controls federal marks, does not define parody per se, but the courts have interpreted it 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.” Or in layman’s terms, where there’s no likelihood of confusion.

If you run a cursory search of My Other Bag, you are immediately bombarded with photos of inexpensive canvas totes, not expensive leather goods. The bags have similar, but not identical images of famous brands on one side and the logo “my other bag,” on the other. As Sprigman and others note: “MOB bags are commenting humorously on society’s obsession with owning status symbols and showing them off.”

LV is known for being an “active and aggressive” enforcer of its trademark rights. Given that its mark has become ingrained in the public consciousness as elite and expensive, it’s opened itself to parody. Courts should be anxious about quieting such exercises of free speech.

Trademark is unique in U.S. intellectual property in that it provides for indefinite monopolies. So long as the mark is active in the market and the proprietor refiles every 10 years, it’s protected. There are a multitude of reasons why the law allows for this, but the most convincing arguments are it prevents passing off and misrepresenting. By conferring this monopolistic status, the consumer is provided a certain set of guarantees of quality the mark provides. Or you just look really fancy.

This is where the courts consistently have walked the fine line between what constitutes free speech and the monopolization of branding. The courts have affirmed the view that if “consumer confusion outweighs the public interest in free expression,” there is a viable argument in favor of the mark’s holder. However, the First Amendment provides broad protection for both individual and commercial speech and this interpretation should always be narrow. Trademarks should not dictate how a consumer thinks, only provide them with market (and quality) indicators.

Furthermore, dilution by blurring is only reserved for famous marks. A “somewhat nebulous concept,” it requires the mark must be in commerce and substantially similar to the famous mark. LV and MOB are in two separate markets. No one can claim an under-$50 canvas bag would be an active competitor to a several thousand dollar leather tote. Nor does MOB claim to assert itself within the same market. In fact, while MOB admitted to wanting to churn up an LV-esque image of luxury, it did not want to do so in a way that mimics, but in a parody for just how cheap their product is, hence the name “My Other Bag…”

Courts should not be stifling speech because one brand doesn’t have a sense of humor.

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Featured image by andersphoto / Shutterstock.com