Seriously: One can use another’s trademark on products to make a joke.

Defendant makes cheap looking handbags with the phrase MY OTHER BAG…affixed to one side

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and an image of a Louis Vuitton bag featuring its famous design pattern on the other side

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Louis Vuitton sued the Defendant alleging its pattern mark is famous and that the use of this pattern by the Defendant on a handbag was likely to dilute the Louis Vuitton mark by blurring.  

Examples of Dilution by Blurring would be DUPONT for shoes; BUICK for aspirin tablets; SCHLITZ for varnish/paints; KODAK for pianos; BULOVA for gowns (e.g., use of a famous mark on goods/services not sold by the trademark owner in association with its famous mark).

The Court appears to accept that the Louis Vuitton pattern mark is famous when used on handbags and focuses its analysis of the issue of Dilution by Blurring.  

The Court sided with the Defendant claiming its use of the Louis Vuitton pattern mark is merely a parody.  In reaching its decision, the Court holds that parody is a form of fair use, and fair use is expressly excluded from a Dilution by Blurring cause of action.  

What is a parody?:  Use of a mark that if, taken as a whole, pokes fun at the mark being used.  In this regard, the Court held that Defendant’s use was essentially the same as the novelty bumper stickers typically placed on old, beat up, blue-smoke-emitting, cars that state “MY OTHER CAR IS A”….Mercedes, BMW, or other luxury car brand.  Just as the use of the MERCEDES and BMW brands are a parody, so is the use of Louis Vuitton’s pattern mark.  

So, one may indeed be able to use another’s trademark in a transparent effort to sell its own product, if one deliberately pokes fun at that same trademark.

Parody also avoided the likelihood of confusion cause of action.  The Court held that the use of Louis Vuitton’s pattern mark was necessary to make the joke being made, and because the pattern mark was only used by the Defendant to make a joke, there was no likelihood a the consumer would conclude that Defendant’s handbags were associated with Louis Vuitton.

Image Courtesy of: Maria Van Bochove Used under Creative Commons license

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