Is it possible to use parody as a defence against trademark infringement claims?

My Other Bag is a company that sells everyday canvas totes with sketches of luxury brand handbags on one side and the phrase “My Other Bag” in big print on the other. Louis Vuitton was not impressed when My Other Bag sold bags that had Louis Vuitton’s trademark.

A complaint was filed by Louis Vuitton, alleging trademark infringement and dilution, among other things. The district court granted summary judgment to My Other Bag, finding that My Other Bag’s items are parodies and therefore not actionable sources of trademark infringement or dilution. Louis Vuitton then filed an appeal with the Second Circuit Court of Appeals.

The Second Circuit upheld the summary judgment, noting that there was no reasonable risk of misunderstanding as to the source or origin of My Other Bag’s products. The Second Circuit based its decision on the following factors:

1. the lack of market proximity between Louis Vuitton’s high-end luxury handbags aimed at the bourgeoisie and My Other Bag’s everyday canvas tote bags aimed at the proletariat;

2. the obvious variations in My Other Bag’s caricature drawing mimicking Louis Vuitton’s signature and replacing Louis Vuitton’s popular interlocking “L” and “Vs” with interlocking “M,” “O,” and “Bs”; and

3. Louis Vuitton’s failure to show persuasive evidence of customer confusion between the two bag manufacturers.

My Other Bag’s tote bags are parodic according to the Second Circuit and therefore fall under the “fair use” exclusion from trademark dilution liability. My Other Bag used the trademark to mock Louis Vuitton’s high-end luxury image.

The more well-known a brand becomes, the more likely it is to be mocked. For parodies to engage in social criticism, well-known brands have become an effective weapon. Consumers are unlikely to be confused by this form of use of a well-known mark because parody requires a deliberate dislocation of the parodied mark from the original. This makes it impossible for trademark owners to object to the unauthorised use of well-known logos since the parodist enjoys the same rights as the trademark owner in the form of free expression.

Nerd at heart