WASHINGTON — On 13 July 2017, Louis Vuitton filed a petition for a writ of certiorari with the U.S. Supreme Court to hear its case against My Other Bag (“MOB”), a small L.A. brand known for its designer bag-on-canvas styles.
According to the petition, “Louis Vuitton has devoted more than a century to developing, promoting, and protecting trademarks that are universally recognized symbols of the company’s products and that constitute a guarantee of the products’ origin and quality.”
Louis Vuitton further asserts, “MOB sought to capitalize on the distinctiveness and positive public perception of Louis Vuitton’s marks by marketing otherwise-ordinary canvas bags bearing its famous marks on one side and the words ‘My Other Bag…’ on the other. In so doing, MOB created a risk that the public will no longer associate Louis Vuitton’s marks only with Louis Vuitton’s high-end products but will also associate the marks with MOB’s bags [emphasis added].”
It goes on to say, “Permitting an entire business model premised on the exploitation of famous marks to sell knock-off products is flatly at odds with Congress’s intent to protect famous marks from dilution [emphasis added].”
“Thus, the Supreme Court would be tasked with coming up with a suitable test for deciding whether an apparently dilutive use of a trademark is protected by the parody defense.”
Louis Vuitton notes, “the question presented in this case has far-reaching significance for countless owners of famous and distinctive marks that, like Louis Vuitton, depend on the protections of the [Trademark Dilution Revision Act (“TDRA”)] to safeguard their intellectual property against improper dilutive uses [link added].”
In its original suit, Louis Vuitton references a dilution-by-blurring claim against MOB “to protect the distinctiveness of its marks.” (It is important to note that dilution is present when an organisation uses a trademark that is sufficiently similar to a famous mark in a way that it harms consumer perception of the famous mark.) However, the Second Circuit held that MOB’s use of Louis Vuitton’s marks is not actionable because it supposedly constitutes “parody” and thus, is fair use.
Louis Vuitton believes this “created a direct conflict” with case law in the Fourth Circuit “regarding the test for identifying parody under the TDRA.” The Petitioner goes on to say that “The Fourth Circuit [court] requires that a parody immediately convey that the famous mark owner’s products and the unauthorized products are different and immediately communicate a joke that confirms that the unauthorized use is intended for an expressive purpose … The Second Circuit required neither of these elements when it concluded that MOB’s use of Louis Vuitton’s marks is a parody [emphasis added].”
Louis Vuitton believes that MOB does not satisfy this requirement, as it was not until this litigation that “MOB added language to its website claiming that it was ‘playfully parodying‘ designer handbags.”
Further, “MOB uses social media to promote its products to fans of Louis Vuitton, repeatedly featuring Louis Vuitton bags in its marketing, either by themselves or next to an MOB bag depicting a Louis Vuitton bag, in order to cement an association among consumers between Louis Vuitton and MOB [emphasis added].”
Nevertheless, the Second Circuit felt that the parody exception “is available even if the purported parody is ‘gentle’ or even ‘complimentary.'”
Louis Vuitton disdains the Second Circuit’s aforementioned belief, stating that the Circuit’s “novel conception of parody…creates a significant uncertainty for all owners of famous marks, who are confronted with divergent parody tests depending on the jurisdiction in which suit is filed [emphasis added].”
The Petitioner goes on to say, “The Second Circuit’s decision vastly expands the fair-use exception beyond the narrow bounds that Congress intended, leaving famous marks vulnerable to widespread dilution through the production of imitation products marketed under the guise of ‘parody.’ The spread of products like those at issue here—designed to appeal to fans of the products that are supposedly being parodied rather than comment on, criticize, or make fun of those products—presents exactly the type of harm that the TDRA was designed to prevent, the slow loss of the distinctiveness of the famous mark [emphasis added].”
Louis Vuitton also disagrees with the Second Circuit in other ways, including that its “adoption of its capacious parody test restricts the availability of trademark dilution claims” and its “approach to parody is also fundamentally inconsistent with the TDRA because it confuses trademark dilution with trademark infringement by relying on considerations—such as likelihood of confusion—that Congress has made clear have no relevance in the dilution setting [emphasis added].”
The Petitioner insists that the Supreme Court’s “intervention is necessary to establish a nationally uniform test for identifying parody in dilution cases, to restore the careful balance between trademark protection and First Amendment rights that Congress struck in the TDRA, and to prevent widespread, irreversible devaluation of famous marks [emphasis added].”
Timeless Trademark™ hopes the Supreme Court decides to grant certiorari and hear the appeal from the lower court, which requires the votes of four justices.