Louis Vuitton pitches parody bag case to US Supreme Court

By

Cassidy Mantor

Published
Jul 20, 2017

Louis Vuitton is trying to take tote brand My Other Bag to the US Supreme Court over its bag-on-a-bag totes that the LA-based company has been able to sell as parodies of luxury designer items.

The luxury retailer recently filed a petition with the US Supreme Court to review previous decisions in a case stemming back to 2014. Decisions of the lower courts have allowed My Other Bag to use Louis Vuitton's trademarks and copyrights as fair use under the parody defense to intellectual property law.

The case began several years ago when My Other Bag received attention for producing $30 to $60 canvas tote bags with images of designer bags printed on them. My Other Bag superimposed images of bags from Balenciaga, YSL, Proenza Schouler and Céline as well as Louis Vuitton.

Louis Vuitton sued My Other Bag in 2014 in federal court in New York for copyright infringement and trademark dilution. Louis Vuitton specifically claimed the bag-on-a-bag product diluted the "distinctive quality" of LV's globally-known trademarks.

In January 2016, the trial court found My Other Bag's designs were protected by the parody defense. 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.

Louis Vuitton has now petitioned the US Supreme Court to review the validity of the parody defense as it relates to trademark dilution. In Louis Vuitton's petition it writes that My Other Bag "sought to capitalize on the distinctiveness and positive public perception of Louis Vuitton’s marks by marketing otherwise-ordinary canvas bags bearing its famous marks on one side and the words 'My Other Bag'."

Louis Vuitton's petition to the Supreme Court relies on a difference of interpretation of the Trademark Dilution Revision Act (TRDA). According to Louis Vuitton, the Second Circuit's decision conflicts with established case law in the Fourth Circuit. This is the luxury brand's best argument to get before the Court.

The US Supreme Court receives over 7,000 petitions to hear cases annually. A vote of four of the justices is required to get before the Court. Under 100 cases are selected annually to be heard.