copyright question

Dear Doc:

I understand that it’s sometimes hard to take when someone makes fun of you, but now I have heard that one of the world’s largest brands, LOUIS VUITTON MALLETIER, S.A. (LVMH) (owners of, among other brands, Ardbeg, Belvedere, Bodega Numanthia, Cape Mentelle, Chandon, Chandon Argentina, Chandon Australia, Chandon California, Chandon China, Chandon do Brasil, Château Cheval Blanc, Château d’Yquem, Cheval des Andes, Cloudy Bay, Dom Pérignon, Glenmorangie, Hennessy, Krug, Mercier, Moët & Chandon, Newton Vineyard, Ruinart, Terrazas de los Andes, Veuve  Clicquot, Wenjun, Berluti, Céline, Christian Dior, Edun, Emilio Pucci, Fendi, Givenchy, Kenzo, Loewe, Loro Piana, Louis Vuitton, Marc Jacobs, Moynat, Nicholas Kirkwood, Thomas Pink, Bvlgari, Chaumet, De Beers Diamond Jewellers, Fred, Hublot, TAG Heuer, Zenith, DFS, La Grande Epicerie de Paris, Le Bon Marché Rive Gauche, Sephora, Starboard Cruise Services, Cheval Blanc, Connaissance des Arts, Cova, Investir, Jardin d’Acclimatation, La Samaritaine, Les Echos, Nowness, Radio Classique, Royal Van Lent) sued a small Los Angeles company that makes canvas tote bags. What gives? Can they do that?

Signed,

Dazed and Confused

Dear D&C:

Yes, you heard right. LVMH did bring a trademark and copyright infringement law suit against a small company called My Other Bag, Inc. (MOB) that makes canvas totes that say “My other bag…” on one side, and have graphics showing bags on the other.  For reference, here is the $35 My Other Bag in the suit:

And here is the similar $1,810 bag from LVMSA:

According to the federal court, “Louis Vuitton brings claims against MOB for trademark dilution and infringement under the Lanham Act, 15 U.S.C. § 1125(c); a claim of trademark dilution under New York law; and a claim of copyright infringement.” The judge in the suit said in his opinion,

MOB’s totes – indeed, its very name – are a play on the classic “my other car . . .” novelty bumper stickers, which can be seen on inexpensive, beat up cars across the country informing passersby – with tongue firmly in `cheek – that the driver’s “other car” is a Mercedes (or some other luxury car brand). The “my other car” bumper stickers are, of course, a joke – a riff, if you will, on wealth, luxury brands, and the social expectations of who would be driving luxury and non-luxury cars. MOB’s totes are just as obviously a joke, and one does not necessarily need to be familiar with the “my other car” trope to get the joke or to get the fact that the totes are meant to be taken in jest. Louis Vuitton Malletier, S.A. (“Louis Vuitton”), the maker of Louis Vuitton bags, is perhaps unfamiliar with the “my other car” trope. Or maybe it just cannot take a joke.”

In a 12 page opinion on January 8, 2016, Judge Furman considered whether MOB infringed trademarks and copyrights, and concluded,

Louis Vuitton is, by its own description, an “active[] and aggressive[]” enforcer of its trademark rights. In some cases, however, it is better to “accept the implied compliment in [a] parody” and to smile or laugh than it is to sue. … MOB’s use of Louis Vuitton’s marks in service of what is an obvious attempt at humor 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. Accordingly, and for the reasons stated above, MOB is entitled to summary judgment on all of Louis Vuitton’s claims[.]

Unhappy with that result, LVMH appealed to the Second Circuit Court of Appeals. On December 22, 2016, the decision of the appellate court took 6 pages to conclude: “UPON DUE CONSIDERATION, IT IS HEREBY ORDERED, ADJUDGED, AND DECREED that the judgment entered on January 8, 2016, is AFFIRMED.” In other words, in this case, the little guy (or, actually, gal, since MOB is the brainchild of Tara Martin who looks a lot like Ivanka what’s-her-name, but I digress…)

So, in the end, after both companies paid lawyers bags full of money, MOB got to keep selling its $35 sacks, and LVMH got to keep selling its $1,800 sacks (guess which Ivanka would buy) and all is right in the world, right?

Do you have a fun product that is causing a gigantic multinational corporation to threaten you? Are YOU a gigantic multinational corporation whose trademarks and copyrights are being infringed by some insignificant speck of a company? The attorneys at LW&H are standing by for your phone calls. So you don’t forget, call before Midnight, tonight.

Until next month, Happy New Year.

The “Doc”

— Lawrence A. Husick, Esq.