Parody takes center stage this week as Louis Vuitton looks to the Supreme Court for consideration in its ongoing case against My Other Bag, a company known for its designer bag-on-a-canvas bag styles. Also on the parody front, Titleist’s parent company, Acushnet, has filed suit against a small golf apparel company for allegedly “tarnishing” the brand with its less than tasteful new offerings. Finally, Donald Trump is fighting fakes as part of a new initiative to celebrate domestically made goods and ward off foreign imports, including counterfeits.
Louis Vuitton Looks to the Supreme Court
Louis Vuitton is taking its battle with My Other Bag, or “MOB,” to the Supreme Court, or at least trying to. The Paris-based fashion house has filed a petition for writ of certiorari, asking America’s highest court to rule on the appropriate test for determining whether an allegedly dilutive use of a party’s trademarks is protected by the parody defense.
Vuitton’s bid for Supreme Court treatment comes nearly three years after it first filed a trademark and copyright infringement and trademark dilution lawsuit against MOB, a small Los Angeles-based brand known for its designer bag-on-a-canvas bag styles. In its suit, which was filed in 2014, Vuitton alleged that the MOB bags not only infringe its highly valuable federally registered trademarks and copyrights, but they also dilute the “distinctive quality” of its world-famous trademarks.
MOB fought back — and won each round — in the New York federal trial court and the court of appeals, asserting that its bags are shielded from trademark infringement and dilution claims thanks to the fair use defense of parody.
To this argument, Vuitton has held that not only are MOB’s bags devoid of parodic character, there is no evidence that “consumers perceived MOB’s products as a joke, or even social commentary, but [instead, viewed them] as a fashion accessory to complement, or even substitute for, the LV bags they owned or wanted.”
In asking the Supreme Court to hear the case, Vuitton’s counsel asserts that “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.”
The Supreme Court will now decide whether to grant certiorari and hear the appeal, which is an extremely rare occurrence, as the court tends to accept only about 1 percent of all petitions for writ of certiorari.
Titleist v. Titties
Speaking of parodies, another recent case rests on the fair use-based defense, suggesting that Louis Vuitton may, in fact, be on to something in saying that Supreme Court intervention is necessary in order to determine the appropriate test for determining whether a trademark use runs afoul of the law or it, instead, amounts to parody.
This past week, I Made Bogey, a golf apparel company, was slapped with a strongly worded lawsuit by golf giant Titleist’s parent company, Acushnet, over gear that makes use of the same distinct font as Titleist’s wares but swaps in the word “Titties.” In its suit, Acushnet sets forth claims of trademark infringement and dilution, and unfair competition, and alleges that I Made Bogey “intentionally creates an unwholesome and undesirable association — one involving a patently offensive and obscene reference to sexual organs and sexual activity,” thereby tarnishing the Titleist trademark.
While I Made Bogey has not yet formally responded to Acushnet’s suit, it will almost certainly cite parody as a defense.
Trump’s Fight Against Fakes
After unveiling the launch of “Made in America” week, which began on Monday, the Trump administration says it will implement ways to defend domestically manufactured products, including by certifying legitimate U.S. goods — in accordance with the Federal Trade Commission’s standards — and aggressively cracking down on imported products that improperly bear a “Made in America” label.
“There’s just too many examples of foreigners slapping on ‘Made in America’ labels to products and the worst insult is when they do it after they have actually stolen the product design,” a White House spokesman said this week.
If that isn’t enough, Trump, who campaigned at least in part based on the promise that he would revive the U.S. manufacturing sector, has said he further intends to ramp up the fight against “predatory online sales of foreign goods,” including counterfeits. The announcement, which noted that the U.S. loses about $300 billion a year due to intellectual property theft, including in the apparel sphere, comes on the heels of a March 2017 executive order giving U.S. Customs officials more authority to seize counterfeit items at U.S. borders.
Julie Zerbo is the founder of The Fashion Law.