My Other Bag Isn’t Infringing

lvBy Alex Bullock

If you ever find yourself at the grocery store with only your designer handbag to put your apples in, know that the option to carry a canvas tote bag with designer style won’t be going away anytime soon.

That’s because My Other Bag (“MOB”) sells utilitarian canvas tote bags featuring images of designer-brand handbags on their sides—which play on the belief that “my bag is a [fill in luxury brand here].” In June 2014, Louis Vuitton (“LV”), one of the world’s most valuable and well-known luxury fashion brands, filed a lawsuit in the Southern District of New York against MOB, alleging both copyright and trademark infringement related to MOB’s canvas tote bags improper use of images featuring LV bags (as seen above). However, MOB was granted summary judgment based on the finding that the images used on MOB canvas tote bags constituted a parody, which brought them under fair use protection for the purposes of trademark-dilution. In addition, the court determined MOB’s use of LV’s well-known pattern was “transformative use.”  A derivative work is transformative if it uses a source work in completely new or unexpected ways.  LV appealed the grant of summary judgment, but the Second Circuit Court of Appeals affirmed the lower court’s decision.

The appellate court noted that MOB’s bags successfully convey the simultaneous and contradictory messages of a parody: “that it is the original, but also that it is not the original and is instead a parody.” MOB’s product mimics LV designs in a way that is recognizable (which, by the way, is necessary for the joke/parody to work), yet their canvas totes do not compete with LV’s product. The court even called MOB’s product “plebian” as compared to LV’s luxury brand. MOB is not using LV’s trademarks to induce consumers to believe they are purchasing an LV bag; instead, they are using them to parody LV’s luxury image. On the copyright issue, the court affirmed that “MOB’s parodic use of LV’s designs produces a new expression and message that constitutes transformative use.”

In our current politically-charged legal climate, it is encouraging to see a case where the law is on the side of an obvious parody. Parody can play an important role in advancing social commentary, particularly in popular culture. Those creating parodic works can follow the example set by MOB to ensure that their work is appropriately a parody. For example, MOB made obvious changes to the original works (replacing the well-known interlocking LV logo with a similar interlocking MOB logo); MOB operates in a completely separate market from the original works—canvas tote bags are not substitute products for designer handbags; and MOB does not use LV’s trademarks or designs to create customer confusion.

Of course, rights holders can and should diligently protect their intellectual property from infringement and other harmful activities, but they should also honestly consider the fair use protection of parodies before litigating a possible infringement case (note that LV can be  particularly litigious, as we have written about some of their legal actions in the past). As Judge Furman of the Southern District of New York told LV in his lower court decision, it is sometimes “better to accept the implied compliment in a parody and to smile or laugh than it is to sue.”

Image source: My Other Bag

 

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