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Who Pays the Price for "My Other Bag"?

By Cheryl L. Davis
This blog updates the article "All's Fair (Use) in Love and Trademarks", EASL Journal, Fall/Winter 2017, Vol.28, No.3

In Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 156 F.Supp.3d 425, (S.D.N.Y. 2016), the Southern District found that the defendant My Other Bag's (MOB's) parodic mimicking of Louis Vuitton's famous mark on MOB's canvas totes neither constituted trademark or copyright infringement, nor was it trademark dilution. This decision was affirmed by the Second Circuit (774 Fed. Appx. 16 (2nd Cir. 2016)), and the plaintiff's petition for certiorari was denied (138 S. Ct. 221 (2017).

Having won, MOB could have taken its bag and gone home. Instead, it moved to recover its attorneys' fees and costs, as it was entitled to do under both the Lanham and Copyright Acts. The Southern District, however, refused to award attorneys' fees. With respect to the trademark claims (infringement and dilution), the court stated: "although the Court (and, by all appearances, 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. [citation omitted]" Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 2018 U.S. Dist. LEXIS 3035 (S.D.N.Y. 1/8/18) at *4. The court also found that "the use of a mark as parody does not necessarily resolve either a [trademark] dilution or an infringement claim" (Id. At *6), and cited to a prior decision in Louis Vuitton's favor (Louis Vuitton Malletier S.A. v. Hyundai Motor Am., No. 10-CV-1611, 2012 U.S. Dist. LEXIS 42795 (S.D.N.Y. 2012)).

The court was equally unpersuaded to award damages for the copyright infringement claim, finding that "[t]he analysis and conclusions above with respect to MOB's application under the Lanham Act all but compel denial of its application under the Copyright Act." 2018 U.S. Dist. LEXIS at *13. The court summed up the situation (and explained its decision to split the litigation baby) as follows: "As this Court's decision granting summary judgment to MOB made clear, Louis Vuitton certainly needs to learn how to take a joke. [citation and quotation omitted.] Its lack of a refined sense of humor, however is not a reason to pile on further by awarding MOB - however sympathetic its cause may be - attorney's fees and costs." Id. At *15.

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