For the past several years, DuetsBlog has covered fashion house Louis Vuitton’s outlandish trademark “bullying” against law schools, dog toys, photographers, and movie studios. Most recently, we discussed the brand’s latest high-profile lawsuit against rival luxury canvas tote maker (sarcasm), My Other Bag, for trademark infringement and dilution.
To the casual observer, one might not be able to distinguish My Other Bag’s signature tote (which on one side says “My Other Bag,” and on the other has a cartoon picture of a bag) from that of Louis Vuitton’s “Speedy Satchel.” Case in point:
Too bad for Louis Vuitton the test for parody is largely based on the casual observer–or, at least those with “a modicum of intelligence.” Even they can tell that My Other Bag’s product was a joke, the District Court held.
My Other Bag Seeks Reimbursement for Louis Vuitton’s Obviously-flawed Lawsuit
After successfully defending itself against Louis Vuitton’s claims, My Other Bag filed a motion for attorneys’ fees incurred in responding to Louis Vuitton’s highly questionable suit, citing the Supreme Court’s recent decision in Octane Fitness v. Icon Health & Fitness, 134 S. Ct. 1749, 1758 (2014). The Lanham Act provides for attorneys’ fees in “exceptional cases,” and it is hard to see how this case might not be one of them, where the parody was–in the words of the District Court–“obvious.” Octane Fitness interpreted “exceptional” under the Patent Act’s identical language to depend on the circumstances and strength of a party’s litigating position (as compared to the typical case).
On January 8, 2018, the District Court–to the surprise of many–denied My Other Bag’s motion, sidestepping whether Octane Fitness applies to the Lanham Act and holding that fees were not appropriate for “several reasons.” Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., No. 14-CV-3419 (JMF), 2018 WL 317850 (S.D.N.Y. Jan. 8, 2018). They include:
- Although the District Court and the Second Circuit “did not find this case to be a particularly close call, it cannot say that Louis Vuitton’s arguments were so objectively unreasonable (as either a legal or factual matter) that no party ‘could see an opening . . . through which the argument[s] could be squeezed,'” primarily because dilution by blurring and infringement are fact-intensive and based on “subtle” multi-factor analyses.
- That a use is parody does not necessarily resolve a dilution or infringement claim, such as when a trademark is used as as designation of source, “and Louis Vuitton advanced colorable (albeit unsuccessful) arguments that [My Other Bag’s] totes designated Louis Vuitton as their source.” The District Court also ironically pointed to a “flawed and distinguishable” case that Louis Vuitton has previously won as evidence that its position was not objectively unreasonable.
- The fact that Louis Vuitton did not show loss of sales or diminution of status is irrelevant because dilution is actionable regardless of actual or likely confusion (citing 15 U.S.C. § 1125(c)(1)).
- Louis Vuitton did not litigate the case “in an exceptionally vexatious and coercive manner,” but rather using merely “acceptable, if aggressive, litigation tactics” that were in some instances “regrettable,” but not exceptionally bad.
- “Louis Vuitton’s aggressive efforts to protect its trademarks have, on occasion, veered toward the unseemly.” The David-and-Goliath match-up was also concerning. However, Louis Vuitton had good reason to aggressively seek enforcement of its marks because if it didn’t, it could risk losing its rights. Moreover, Louis Vuitton has a history of winning many of its cases.
The District Court’s Precedent Will Likely Lead to More Undeserved Settlements in Parody Defense Cases
It is difficult to agree with the District Court’s conclusion on fees in this case, especially in view of the fact that Louis Vuitton is branded as “one of the biggest trademark bullies around.” There is something to be said for diligent protection of trademark rights, but it’s one thing to go after a counterfeiter and quite another to cause a non-competing humorist to expend over $800,000 in its defense. That both the District Court and the Second Circuit actually called Louis Vuitton out for its failure to take a joke shows that the company’s litigating position was exceptionally laughable.
More importantly, the ruling lays out an impossibly-high standard in effect; if this case is not exceptional, it is hard to believe any other case with the same procedural history would be. What constitutes exceptionally “vexatious and coercive” behavior if not the bringing of an unreasonable lawsuit? Ultimately, the District Court’s precedent, if adopted by other courts, will likely lead to more undeserved settlements. The jokesters become the butt of their own jokes, and the humorless thread one more feather to their “unseemly” caps.
Thankfully others in the fashion industry, such as Chanel’s Karl Lagerfeld, show some semblance of fun–particularly as to tote bags. But given that the one he’s sporting below was made by Naco Paris in response to winning a trademark suit brought by Chanel, maybe not so much.