For years, designer handbag maker Louis Vuitton has been entrenched in trademark litigation against the Los Angeles based one-woman tote bag maker “My Other Bag.” My Other Bag sells relatively inexpensive canvas tote bags depicting caricatures of expensive designer handbags on one side with the text “My Other Bag” on the other. One such bag depicts the Louis Vuitton pattern, shown below. As explained by My Other Bag’s founder and CEO Tara Martin, the purpose of the bags is to provide stylish eco-conscious reusable bag options to customers. Not wanting to carry groceries in expensive handbags, Ms. Martin describes that she developed My Other Bag to “playfully parody” expensive designer bags that certain consumers, with eclectic tastes, love. The difference being: practicality.
In 2014, Louis Vuitton filed suit against My Other Bag in U.S. District Court for the Southern District of New York, alleging that My Other Bag’s use of Louis Vuitton’s designs constituted willful trademark infringement, copyright infringement, and diluted the value of the famous Louis Vuitton designs. The Southern District of New York denied Louis Vuitton’s claims, holding that My Other Bag’s use was an obvious parody and thus fair use of the trademarks. The court stated that My Other Bag’s “use of Louis Vuitton’s marks in service of what is an obvious attempt at humor is not likely to cause confusion or the blurring of the distinctiveness of Louis Vuitton’s marks; if anything, it is likely only to reinforce and enhance the distinctiveness and notoriety of the famous brand.” Ironically, a common justification articulated by many infringers.
Unsatisfied with this result, Louis Vuitton appealed the decision to the United States Court of Appeals for the Second Circuit. The Second Circuit affirmed the lower court’s ruling in favor of My Other Bag, finding that parody of Louis Vuitton’s “luxury image is the very point” of My Other Bag’s tote bags.
Still yet unsatisfied, Louis Vuitton sought to further appeal to the Supreme Court by filing a petition for writ of certiorari. Louis Vuitton argued that the Supreme Court should hear the challenge because it had “profound importance” and “far-reaching significance for countless owners of famous and distinctive marks that, like Louis Vuitton, depend on the protections of [the Federal trademark dilution statute] to safeguard their intellectual property against improper dilutive uses.” Louis Vuitton believed that the decision by the Second Circuit leaves famous mark owners “vulnerable to widespread dilution through the production of imitation products marketed under the guise of ‘parody.’”
Despite Louis Vuitton’s plea, the Supreme Court recently announced that it would not hear Louis Vuitton’s appeal. As is common for Supreme Court denials, the Court denied the petition without comment.
As a result, the decision by the Second Circuit is upheld, and My Other Bag’s use of Louis Vuitton’s trademarks without a license is permitted.
Emboldened by these results, My Other Bag has filed a request for attorneys’ fees before the district court in excess of $900,000 for work including the appeals. My Other Bag argues that the case is exceptional and it should be awarded attorneys’ fees because the case was “manifestly lacking” in merit and because Louis Vuitton did not file the case to win on the merits. Rather, My Other Bag claims that the purpose of the suit was to “bully” a “one-woman business that lacked the resources” to fight the infringement claim. The request for attorneys’ fees is currently pending.
Despite this being a parody case, no one appears to be laughing.