Article February 6, 2017

Parodies in trademark – the case of Louis Vuitton

A recent case in the Southern District of New York resulted in a loss for luxury brand Louis Vuitton when the provisions of a ‘parody defence’ was tested under US trademark law.

Louis Vuitton lodged a suit against My Other Bag and a subsequent appeal, but both were unsuccessful. The two bags were deemed sufficiently dissimilar in order to be confused with one another, as well there being a lack of market proximity between consumers of the two brands. As such, my Other Bag successfully defended their case as ‘Nominative Fair Use’, a type of freedom of expression defence to balance the rights afforded to registered intellectual property rights owners.

The result may be seen as a blow to Louis Vuitton, particularly as the legal case has given My Other Bag more attention and publicity than it otherwise would. At the time of writing, representatives for Louis Vuitton have gone on to submit a request to the court for a rehearing.

Would the outcome of the legal proceedings have been different in Canada, Europe or elsewhere?

In 2015 compiled a trademark defence guidance document accessible for registered users, which includes analysis on how parody as a defence in trademark infringement might be interpreted in various legal jurisdictions. Broadly, where the parody is made in detriment to the reputation of the trademark, most jurisdictions will find trademark infringement. Whether or not a parody was made for commercial gain appears to influence the outcome in court to a varying extent.

Other sources: