## Facts

- Louis Vuitton Malletier, S.A. owned famous trademarks and trade dress used on luxury handbags, including the LV monogram and related designs, and held registered copyrights in certain designs.
- My Other Bag, Inc. sold inexpensive canvas tote bags.
- MOB’s totes showed cartoon-style images referencing luxury handbags, including Louis Vuitton-inspired patterns that replaced the “LV” with “M,” “O,” and “B,” and included the phrase “My Other Bag.”
- Louis Vuitton sued alleging trademark infringement and unfair competition, trademark dilution by blurring (federal and New York law), and copyright infringement.
- MOB asserted parody defenses to the trademark claims and fair use to the copyright claim.
- The district court granted MOB summary judgment on all claims; the Second Circuit affirmed. MOB later sought attorney’s fees, which the district court denied and the Second Circuit affirmed.

## Issues

1. Whether MOB’s tote bags were likely to cause consumer confusion as to source, sponsorship, or affiliation under the Lanham Act.
2. Whether MOB’s use of Louis Vuitton’s famous marks and trade dress constituted dilution by blurring, or instead qualified for the statutory parody/fair-use exclusion.
3. Whether MOB’s use of copyrighted design elements was protected by fair use under 17 U.S.C. § 107.
4. Whether the case was “exceptional” so as to warrant attorney’s fees to MOB as a prevailing defendant under the Lanham Act and/or the Copyright Act.

## Decision

- The district court granted summary judgment to MOB on trademark infringement and unfair competition, finding no likelihood of confusion under the *Polaroid* factors.
- The district court granted summary judgment to MOB on dilution, holding MOB’s use was a parody within the Lanham Act’s dilution fair-use exclusion.
- The district court granted summary judgment to MOB on copyright infringement, holding MOB’s use was fair use because it was transformative and posed little cognizable market harm.
- The Second Circuit affirmed the merits judgment, agreeing that product differences, lack of market proximity, and minimal evidence of confusion supported judgment for MOB, and that the parody analysis supported rejection of dilution and copyright claims.
- The district court denied MOB’s motion for attorney’s fees; the Second Circuit affirmed, holding the court did not abuse its discretion in finding the case not exceptional.

## Legal Principles

- In evaluating trademark infringement, a court may grant summary judgment where no reasonable jury could find a likelihood of confusion under the *Polaroid* factors, including where the challenged use is an obvious parody and evidence of actual confusion is weak.
- For dilution by blurring, the Lanham Act excludes from liability fair use “including use in connection with parodying, criticizing, or commenting upon” a famous mark; a parody must both evoke the original and simultaneously signal it is not the original.
- A parody need not be harsh to qualify as parody; gentle humor can satisfy the requirement that the junior use comment on the senior mark’s image rather than merely exploiting its goodwill.
- Copyright fair use can protect a transformative, parodic use that copies enough to evoke the original, particularly where the secondary work serves a comedic/commentary purpose and does not substitute for the original or its licensing markets.
- Attorney’s fees are discretionary; a prevailing defendant is not entitled to fees absent a showing (under the governing standards) that the case is exceptional or otherwise warrants fee shifting.

## Conclusion

The courts held that My Other Bag’s cartoonish “My Other Bag” totes were an obvious parody that was unlikely to confuse consumers or blur the distinctiveness of Louis Vuitton’s marks, and that the limited use of Louis Vuitton’s copyrighted design elements was transformative fair use; despite MOB’s complete victory, fee shifting was denied because the case was not exceptional.


Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 156 F. Supp. 3d 425 (S.D.N.Y. 2016), aff’d, 674 F. App’x 16 (2d Cir. 2016)