LOUIS VUITTON MALLETIER, S.A., Plaintiff-Appellant, v. MY OTHER BAG, INC., Defendant-Appellee.
No. 16-241-cv
United States Court of Appeals, Second Circuit.
December 22, 2016
We have considered Navigators’ remaining arguments and conclude that they are without merit. Accordingly, we hereby VACATE the award of summary judgment to Navigators and REMAND the case for further proceedings consistent with this order.
APPEARING FOR APPELLEE: DAVID S. KORZENIK (Terence P. Keegan, on the brief), Miller Korzenik Sommers Rayman LLP, New York, New York; Brian J. Philpott, Corey Donaldson, on the brief, Koppel, Patrick, Heybl & Philpott, Westlake Village, California.
PRESENT: GUIDO CALABRESI, REENA RAGGI, GERARD E. LYNCH, Circuit Judges.
SUMMARY ORDER
Plaintiff Louis Vuitton Malletier, S.A. (“LV“) appeals from an award of summary judgment in favor of My Other Bag, Inc. (“MOB“) on LV‘s claims under federal and state trademark and copyright law. See
1. Trademark Infringement
LV submits that the district court ignored or discounted favorable record evidence during its application of the non-exclusive, eight-factor Polaroid balancing test, see Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961), and thereby wrongly concluded that there was no likelihood of consumer confusion between LV‘s and MOB‘s products. The argument fails because, whether we review the district court‘s findings as to each Polaroid factor deferentially, see Playtex Prods., Inc. v. Ga.-Pac. Corp., 390 F.3d 158, 162 (2d Cir. 2004), or de novo, see
2. Trademark Dilution
LV argues that the district court erred in finding as a matter of law that the use of its marks on MOB‘s tote bags was parodic, bringing it within the “fair use” exclusion from dilution liability. See
“A parody must convey two simultaneous and contradictory--messages: that it is the original, but also that it is not the original and is instead a parody.” Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 503 (2d Cir. 1996) (quoting Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ‘g Grp., Inc., 886 F.2d 490, 495 (2d Cir. 1989)). MOB‘s bags do precisely that. At the same time that they mimic LV‘s designs and handbags in a way that is recognizable, they do so as a drawing on a product that is such a conscious departure from LV‘s image of luxury--in combination with the slogan “My other bag“--as to convey that MOB‘s tote bags are not LV handbags. The fact that the joke on LV‘s luxury image is gentle, and possibly even complimentary to LV, does not preclude it from being a parody. See Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 156 F.Supp.3d at 435-38; see also L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 34 (1st Cir. 1987) (“[A] trademark parody reminds us that we are free to laugh at the images and associations linked with the mark . . . [or provides] entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark‘s owner.“). Indeed, a parody of LV‘s luxury image is the very point of MOB‘s plebian product. That distinguishes this case from ones cited by LV where a trademark was used merely to “promote” or “sell” goods and services, which is impermissible. See Starbucks Corp. v. Wolfe‘s Borough Coffee, Inc., 588 F.3d at 115 (using “Charbucks” to identify coffee blend as one competing at same level and quality as Starbucks); Harley Davidson, Inc. v. Grottanelli, 164 F.3d 806, 813 (2d Cir. 1999) (using Harley-Davidson logo to advertise motorcycle repair shop).
LV nevertheless contends that MOB is not entitled to a fair-use dilution defense because MOB uses LV‘s marks as a “designation of source.”
Accordingly, we affirm the award of summary judgment to MOB on LV‘s federal trademark-dilution claim. We likewise affirm summary judgment to MOB on LV‘s state-law dilution claim. While
3. Copyright Infringement
MOB‘s parodic use of LV‘s designs produces a “new expression [and] message” that constitutes transformative use. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994) (alterations, citations, and internal quotation marks omitted); accord TCA Television Corp. v. McCollum, 839 F.3d 168, 180 (2d Cir. 2016). Like the district court, we conclude that the remaining fair-use factors either weigh in MOB‘s favor or are irrelevant, see Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 156 F.Supp.3d at 444-45, and LV‘s arguments to the contrary largely repeat or echo those we have already rejected.
Accordingly, we affirm the award of summary judgment to MOB on LV‘s copyright claim.
4. Conclusion
We have considered LV‘s remaining arguments and conclude that they are without merit. Accordingly, the judgment of the district court is AFFIRMED.