Louis Vuitton (LV) has been relatively well-known for its aggressive trade mark enforcement. Over the years, it has filed law suits against artists, Hyundai and even Warner Brothers for using its signature Toile monogram design. In the latest case, LV sued a small enterprise called “My Other Bag” which produced bags inspired by the “my other car…” joke in the Southern District of New York Court. My Other Bag produces cheap canvas tote bags with the words “My Other Bag . . .” on one side and artistic drawings of luxury handbags, such as Louis Vuitton, Chanel, and Fendi, on the other side. In the present case, LV’s claims were based on Trade Mark Dilution, Trade Mark Infringement and Copyright Infringement.
Even though LV’s lawyers did not get the joke, Judge Jesse Furman did and granted summary judgment earlier. Judge Furman ruled that the defendant’s bags are protected as fair use as its use of the LV marks constitutes “parody”. It noted that a “parody” clearly indicates to the ordinary observer “that the defendant is not connected in any way with the owner of the target trademark”, which was exactly what the defendant’s bags portrayed.
In his conclusion, Judge Furman commented that LV should have “accepted the implied compliment in [a] parody” and smile or laugh at the parody instead of suing. The Judge explained that what the defendant, My Other Bag, did was “an obvious attempt at humor” and “is not likely to cause confusion or the blurring of the distinctiveness of the Louis Vuitton’s marks”. In fact, the parody bag is “likely only to reinforce and enhance the distinctiveness and notoriety of the famous brand”.
In our view, this was a good decision as it prevents yet another case of “trade mark bullying” by the notorious luxury brand. After this strongly-worded decision, we hope LV’s lawyers would think twice before filing a law suit for trade mark infringement, especially against small enterprises or individuals.