The Joke is in the Bag! Parody at the Federal and TTAB Levels

The Second Circuit, in suggesting that Louis Vuitton “cannot take a joke,” found that My Other Bag's parodic use of the tongue-firmly-in-cheek cartoonish designs on its totes was permissible, in that it constituted a non-infringing transformative use. Moreover, the court stated that “obvious differences in My Other Bag's mimicking of Louis Vuitton's mark, the lack of market proximity between the products at issue, and minimal, unconvincing evidence of consumer confusion compel a judgment in favor of My Other Bag on Louis Vuitton's trademark claim.” In effect, the use of the Louis Vuitton graphics on the totes were not used to designate source and, ultimately, the use was not likely to impact the distinctiveness of Louis Vuitton's trademarks. Further, with regard to the dilution claim, the Second Circuit determined that while the My Other Bag totes “… mimic Louis Vuitton's designs and handbags in a way that is recognizable, they do so as a drawing on a product that is such a conscious departure from Louis Vuitton's image of luxury — in combination with the slogan 'My Other Bag' — as to convey that My Other Bag's tote bags are not Louis Vuitton handbags.” Ultimately, the Second Circuit upheld the district court's decision, noting that the totes did not infringe on Vuitton's copyright or trademark rights and did not amount to dilution given that it was evident that My Other Bag was mimicking the Vuitton brand (among other designer labels), in light of the separable channels of trade and lack of market proximity, and considering the lack of evidence put forth to demonstrate consumer confusion.

The Parody Defense

This decision continues the trajectory of successful parody defenses in litigation, including the Fourth Circuit's prior ruling in 2007 on CHEWY VUITTON, another loss for Vuitton. In the CHEWY case, the court held that the use of CHEWY VUITTON on plush dog toys would not be likely to cause confusion in the marketplace but that the dilution statue does not permit a fair use defense when the parody itself is used to identify source. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC. 507 F.3d 252 (4th Cir. 2007). As with My Other Bag, the parody brand owner, Haute Diggity Dog, was found to be mimicking the famous marks. The Fourth Circuit determined that “it did not come so close to them as to destroy the success of its parody and, more importantly, to diminish the LVM marks' capacity to identify a single source.” Id. (For more on the case, see, “Bone of Fido Parody: Louis Vuitton v. Chewy Vuiton,” in the January 2008 issue of The Intellectual Property Strategist.)

For purposes of registration with the United States Patent and Trademark Office (USPTO), however, a parody defense is unavailable when the mark is used for the purpose of designating product origin and, as a result, will not be approved for trademark registration. By way of example, as a stark contrast to the Fourth Circuit's holding for CHEWY VUITTON, the Trademark Trial and Appeal Board (TTAB) issued precedential holdings denying applications for marks such as CRACKBERRY and THE HOUSE THAT JUICE BUILT, noting that the language of the dilution statute does not permit a fair use defense when the parody is, in itself, a source identifier for goods and/or services. By its very nature, to be registrable, a trademark must function as a source identifier. As such, a parody defense can only be applicable if the term at issue does not function as a trademark, which by definition means the term is not registrable.

To highlight the distinct handling of the parody defense at the federal court and TTAB levels, the Board noted in its decision regarding the CRACKBERRY application that “when federal courts are dealing with questions of alleged infringement, the protective penumbra of free speech may well support the premise that members of the public have a right to use words in the English language to interest and amuse other persons. However, when this Board is asked the narrower question of applicants' right to registration under Section 2(d) of the Lanham Act, the First Amendment claim is not as strong as with issues of restraint on use.” Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc., 102 USPQ2d 1187, 1192 (TTAB 2012). Based on the aforementioned, it would seem as though applying for a parody trademark is a doomed endeavor. Not only is an application for federal registration intrinsically a claim that the mark is a source identifier (thereby negating the parody defense), but it flags the parodied usage and potentially incites the owner of the parodied mark. As it stands, when it comes to trademark registration, parody remains no laughing matter.

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Jennifer Ashton is an associate of Bracewell LLP. Erin Hennessy is a partner at Bracewell, and a member of the Board of Editors of The Intellectual Property Strategist.

On Feb. 13, 2017, the eve of Valentine's Day, the Second Circuit Court of Appeals extended no love to Louis Vuitton, effectively asserting that it would not rehear the infringement suit against My Other Bag, Inc., denying the en banc request in a brief order. This follows the Second Circuit's affirmation of summary judgment in favor of My Other Bag in December 2016, holding that its brand-spoofing canvas totes didn't amount to trademark or copyright infringement or dilution of Louis Vuitton's intellectual property rights and were properly protected by the parody defense. Louis Vuitton Malletier, S.A. v My Other Bag Inc., No 16-241-cv (2d Cir, Dec. 22, 2016).

The line of reusable bags bear the “My Other Bag” moniker on one side with a printed representation of a luxury brand bag on the other — admittedly “parodying the designer bags we love, but practical enough for everyday life.” The My Other Bag tagline is a clear play on the “My other car is a …” bumper sticker gag, as noted by the district court, which juxtaposes the consumer's cheap product with the expensive designer product. The joke, however, was lost on Louis Vuitton, which has historically been vigilant about pursuing potential infringers.

While Louis Vuitton bags retail for hundreds or thousands of dollars each, the My Other Bag totes are sold for $30-55 and are marketed to carry the items too undesirable for a luxury bag — such as gym gear or beach towels. The Second Circuit determined that the joke itself, namely, the implication that the “other bag” is the luxury designer bag and not the tote that the consumer is using to schlep groceries and laundry, paired with the purposefully caricature-like renderings on the totes, were sufficient to establish distance between My Other Bag's goods and those of Louis Vuitton. The court ruled that the “obvious attempt at humor” was likely “only to reinforce and enhance the distinctiveness and notoriety of the famous brand” rather than to cause confusion or dilution in the marketplace.

The Second Circuit, in suggesting that Louis Vuitton “cannot take a joke,” found that My Other Bag's parodic use of the tongue-firmly-in-cheek cartoonish designs on its totes was permissible, in that it constituted a non-infringing transformative use. Moreover, the court stated that “obvious differences in My Other Bag's mimicking of Louis Vuitton's mark, the lack of market proximity between the products at issue, and minimal, unconvincing evidence of consumer confusion compel a judgment in favor of My Other Bag on Louis Vuitton's trademark claim.” In effect, the use of the Louis Vuitton graphics on the totes were not used to designate source and, ultimately, the use was not likely to impact the distinctiveness of Louis Vuitton's trademarks. Further, with regard to the dilution claim, the Second Circuit determined that while the My Other Bag totes “… mimic Louis Vuitton's designs and handbags in a way that is recognizable, they do so as a drawing on a product that is such a conscious departure from Louis Vuitton's image of luxury — in combination with the slogan 'My Other Bag' — as to convey that My Other Bag's tote bags are not Louis Vuitton handbags.” Ultimately, the Second Circuit upheld the district court's decision, noting that the totes did not infringe on Vuitton's copyright or trademark rights and did not amount to dilution given that it was evident that My Other Bag was mimicking the Vuitton brand (among other designer labels), in light of the separable channels of trade and lack of market proximity, and considering the lack of evidence put forth to demonstrate consumer confusion.

The Parody Defense

This decision continues the trajectory of successful parody defenses in litigation, including the Fourth Circuit's prior ruling in 2007 on CHEWY VUITTON, another loss for Vuitton. In the CHEWY case, the court held that the use of CHEWY VUITTON on plush dog toys would not be likely to cause confusion in the marketplace but that the dilution statue does not permit a fair use defense when the parody itself is used to identify source. Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC . 507 F.3d 252 (4th Cir. 2007). As with My Other Bag, the parody brand owner, Haute Diggity Dog, was found to be mimicking the famous marks. The Fourth Circuit determined that “it did not come so close to them as to destroy the success of its parody and, more importantly, to diminish the LVM marks' capacity to identify a single source.” Id. (For more on the case, see, “Bone of Fido Parody: Louis Vuitton v. Chewy Vuiton,” in the January 2008 issue of The Intellectual Property Strategist.)

For purposes of registration with the United States Patent and Trademark Office (USPTO), however, a parody defense is unavailable when the mark is used for the purpose of designating product origin and, as a result, will not be approved for trademark registration. By way of example, as a stark contrast to the Fourth Circuit's holding for CHEWY VUITTON, the Trademark Trial and Appeal Board (TTAB) issued precedential holdings denying applications for marks such as CRACKBERRY and THE HOUSE THAT JUICE BUILT, noting that the language of the dilution statute does not permit a fair use defense when the parody is, in itself, a source identifier for goods and/or services. By its very nature, to be registrable, a trademark must function as a source identifier. As such, a parody defense can only be applicable if the term at issue does not function as a trademark, which by definition means the term is not registrable.

To highlight the distinct handling of the parody defense at the federal court and TTAB levels, the Board noted in its decision regarding the CRACKBERRY application that “when federal courts are dealing with questions of alleged infringement, the protective penumbra of free speech may well support the premise that members of the public have a right to use words in the English language to interest and amuse other persons. However, when this Board is asked the narrower question of applicants' right to registration under Section 2(d) of the Lanham Act, the First Amendment claim is not as strong as with issues of restraint on use.” Research in Motion Ltd. v. Defining Presence Mktg. Grp., Inc. , 102 USPQ2d 1187, 1192 (TTAB 2012). Based on the aforementioned, it would seem as though applying for a parody trademark is a doomed endeavor. Not only is an application for federal registration intrinsically a claim that the mark is a source identifier (thereby negating the parody defense), but it flags the parodied usage and potentially incites the owner of the parodied mark. As it stands, when it comes to trademark registration, parody remains no laughing matter.

*****
Jennifer Ashton is an associate of Bracewell LLP. Erin Hennessy is a partner at Bracewell, and a member of the Board of Editors of The Intellectual Property Strategist.