Supreme Court Rejects Louis Vuitton's Trademark Lawsuit Over Parody Tote Bags

United States - The US Supreme Court will not hear Louis Vuitton's trademark case against My Other Bag, Inc., the LA-based brand that prints images of luxury handbags on cotton market totes.

The decision puts a substantive conclusion on a three year legal battle that began in 2014 when Louis Vuitton sued My Other Bag in New York federal court for copyright infringement and trademark dilution in order to protect its intellectual property.

The case arose from a line of $30 to $60 canvas tote bags produced by the LA based brand My Other Bag brand that printed images of tLouis Vuiiton handbags on cotton tote bags. Louis Vuitton argued that the bag-on-a-bag product line diluted the "distinctive quality" of LV's well known trademarks. My Other Bag also used images of bags from Balenciaga, YSL, Proenza Schouler and Céline, in addition to Louis Vuitton.

Louis Vuitton argued that it "has devoted more than a century to developing, promoting, and protecting trademarks that are universally recognized symbols of the company’s products and that constitute a guarantee of the products’ origin and quality.”

In January 2016, the trial court found My Other Bag's designs were protected by the parody defence. The court ruled that My Other Bag's products fell into the arena of fair use as parodies, which allows products to be on the market when there would be no confusion as to the authenticity because consumers would undoubtedly know they were parodies.

Louis Vuitton appealed this loss, and the appellate court for the Second Circuit also found there was no infringement. In its decision in December 2016, My Other Bag's designs were again determined to be fair use. The company was allowed to continue to sell these tote bags as parodies of the authentic luxury bags.

Regarding the notion of parody, the Second Circuit U.S. Court of Appeals panel in December 2016 noted that a parody “must convey two simultaneous — and contradictory — messages:  that it is the original, but also that it is not the original and is instead a parody.”   confirming that My Other bags “do precisely that,” according to the Second Circuit.

The panel agreed with Judge Furman that “MOB’s parodic use of LV’s designs produces a ‘new expression [and] message’ that constitutes transformative use.”

Fashion house Louis Vuitton later filed a petition for a writ of certiorari with the US Supreme Court. In its petition to the US Supreme Court, Louis Vuitton that sought to challenge “whether the Second Circuit's test for determining if the unauthorized use of a famous mark constitutes parody is consistent with the” TDRA.

rejecting the case, the Court has affirmed that My Other Bag can continue using Louis Vuitton's images and registered marks for its bag-on-a-canvas-bag product line under the legally permissible exception of parody

LV noted that TDRA, “provides owners of famous and distinctive marks with a remedy for dilution of those marks by blurring. while providing exceptions for fair use, including parodying. " However LV contended that the Second Circuit erred in deeming MOB’s use of its marks a parody." Arguing that the Courts “an expansive approach to parody that seriously undermines the [TDRA's] overriding objective of safeguarding famous marks against dilution.”

Still, the US Supreme Court has rejected Louis Vuitton's appeal, leaving the orginal judgement intact, as a legal victory for My Other Bag that allows it to continue producing its bag-on-a-canvas-bag designs. 

The two parties are now currently arguing over attorney's fees which are reportedly of the value of $800,000.