When is a copycat a parody?

February 15th, 2016

A recent case in New York has considered whether canvas tote bags that included copies of Louis Vuitton’s trade marks and designs infringed their IP rights, as reported by TechDirt.

The defendant in the case, My Other Bag, Inc. (“MOB”) sells bags that have the text “My Other Bag …” on one side and drawings which bring to mind Louis Vuitton bags on the other side. In 2014, Louis Vuitton brought a claim for copyright and trade mark infringement against MOB.

LVMH

On 6 January 2016, Judge Jesse M. Furman ruled in favour of MOB and concluded that use by MOB of Louis Vuitton’s trade marks and copyrights on its bags amounted to parody. The case report can be viewed here and images of both Louis Vuitton’s and MOB’s bags can be seen at the end of the report. Although MOB’s bags clearly evoked iconic Louis Vuitton bags, MOB’s bags made clear that they were not Louis Vuitton products. As Judge Furman stated, “the whole point is to play on the well-known “my other car …” joke by playfully suggesting that the carrier’s “other bag” — that is, not the bag that he or she is carrying — is a Louis Vuitton bag”.

On the trade mark claim, the US court decided that there was no likelihood that a considerable number of typically careful purchasers would be misled or confused as to the source of the bags. Louis Vuitton and MOB targeted different customers, their products were sold in different shops and there was a lack of actual confusion between Louis Vuitton and MOB products. Although MOB purposely imitated the Louis Vuitton products, it did so in a way that conveyed the message that it was making fun of the luxury brand and was certainly not the source of Louis Vuitton products.

In his conclusion, Judge Furman noted that in some cases, “it is better to “accept the implied compliment in [a] parody” and to smile or laugh than it is to sue”. Furthermore, “MOB’s use of Louis Vuitton’s marks in service of what is an obvious attempt at humor (sic) is not likely to cause confusion or the blurring of the distinctiveness of Louis Vuitton’s marks; if anything, it is likely only to reinforce and enhance the distinctiveness and notoriety of the famous brand”.  You can read the full case report here.

Readers may be aware that the UK recently  incorporated a parody defence to copyright infringement, but the same defence does not apply to trade mark claims. If this dispute had been brought before the English Courts, and LVMH had made a copyright claim, the parody defence would likely have been relevant. However a trade mark claim would likely have produced a similar outcome to that in the USA.  As MOB’s bag did not adopt an identical sign to LVMH’s trade marks,  LVMH would have carried the additional burden of demonstratring  a likelihood of confusion for MOB’s use to have infringed LVMH’s trade marks.

 

By: Sarah Wright
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