Louis Vuitton wants to take its claims of trademark infringement against My Other Bag all the way to the U.S. Supreme Court, but convincing the justices that a caricature of an iconic bag is a matter of national importance isn’t a sure thing.
The French luxury house formally petitioned the high court late last week, asking the nine active justices to train their precedent-setting eyes on a December ruling by the Second Circuit, which rejected Louis Vuitton’s claim that a screen-printed image of its monogram tote showing up on a canvas bag went beyond parody and diluted its trademarked images and designs.
A federal New York court also sided with My Other Bag early last year, rejecting all of Louis Vuitton’s claims, characterizing the totes as “an obvious attempt at humor.”
Under U.S. trademark law, reproduction of registered marks is allowed in the form of a parody, generally so long as the product doesn’t create “consumer confusion” as to its origin, but there is no hard and fast definition in the law as to what counts as parody and what crosses the line of infringement. A big issue for courts is often the First Amendment, and to what level the parody constitutes freedom of speech.
In the eyes of Louis Vuitton, My Other Bag’s totes are not being used “for expressive purposes,” but instead “to free-ride” on its famous marks. The company told the high court that the Second Circuit decided My Other Bag was partaking in parody without responding to either of these elements, creating “an expansive approach to parody that seriously undermines [the Trademark Dilution Revision Act’s] overriding objective of safeguarding famous marks against dilution.”
This in turn has muddled the application of trademark law, meaning the Supreme Court’s “intervention is urgently needed” in order to “restore uniformity,” Louis Vuitton said.
That could be a reach.
“I’d be shocked if the court took it up,” said Jed Ferdinand, a longtime intellectual property lawyer who operates his namesake firm. “I sympathize with [Louis Vuitton], but I completely agree from an objective standpoint with the courts that have considered this case and rejected its argument. The appeals court really made short shrift of it.”
Ferdinand also noted that the case doesn’t appear to rise to the level of national importance, a standard for any case the Supreme Court decides to take up, and considering the court already takes less than 1 percent of the cases it’s petitioned to look at, it doesn’t bode well for Louis Vuitton’s chances.
“I think this is a case where Louis Vuitton didn’t like the outcome, but I’m not surprised they’re trying to take it all the way,” Ferdinand said. “If you’re Louis Vuitton you want to send a message that you’re policing the market and there’s a certain deterrent value for aggressive enforcement. Maybe it’ll stop somebody else.”
He referenced the legal fee My Other Bag has undoubtedly racked up in defending this case as deterrent enough for plenty of companies and brands, but also noted the importance of Louis Vuitton’s aggressive stance in protecting such a popular luxury brand.
However, Christopher Buccafusco, a professor and director of the intellectual property program at Cardozo Law School in New York, said Louis Vuitton just might get (another) day in court.
He said the court might be signaling that it wants to take a closer look at the dilution element of trademark law and pointed to several recent rulings, including Star Athletica v. Varsity Brands, in which it decided certain elements of apparel can be protected through copyright, and Matal v. Tam, in which it decided an Asian-American band called “The Slants” could trademark the name despite government regulations around “offensive” names.
But even if that turns out to be the case, Buccafusco isn’t exactly expecting a win for Louis Vuitton.
“In dilution cases like this one, the reason for limiting the defendant’s speech isn’t really to protect consumers, but to protect the mark owner’s ‘brand,’” Buccafusco said. “It’s not clear to many people that the potential risks to companies like Louis Vuitton are substantial enough to justify trademark law’s restriction on speech. So, if the court continues to be careful about the relationship between trademark law and speech, it might want to reaffirm those principles here.”
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