Louis Vuitton to American Courts, “Make High Fashion Exclusive Again”

Louis Vuitton Kobe Maison

Louis Vuitton is known for their iconic “Louis Vuitton Monogram Canvas” trademark bag.¹ For over 190 years Louis Vuitton has encapsulated a design that is known at the look of an eye as a symbol of wealth and high class.² However, when a symbol is highly sought out people will try to acquire it at all costs, even settling for a similar or replica. While not all people have access to Canal St. in New York City, the Internet has lead to a major increase in counterfeiting with little repercussions to the counterfeiters.³ One of the biggest counterfeiting victims is Louis Vuitton, and in return it has been one of the most active anti-counterfeiting forces in the world of fashion.⁴ This led replicators to try to use the law to their advantage to legally sell knockoffs of the iconic brand, and one way to do this is to use the parody defense in court.⁵

The parody defense became relevant to fashion replicators since the Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC decision in 2007.⁶ In that case, Haute Diggity Dog produced a “Chewy Vuiton” toy, which imitated the well-known trademark and trade dress of Louis Vuitton, and the court held that the defendant was not liable for trademark infringement because its use of the Chewy Vuiton mark for dog toys was an effective parody of Louis Vuitton.⁷ This case set up the analysis on how the parody defense is used in fashion law.⁸ The Louis Vuitton court stated that parody requires that the unauthorized use of the trademark “communicate[s] some articulable element of satire, ridicule, joking or amusement” in reference to the plaintiff’s trademark.⁹ However, this only succeeds when the parody is not using any trademarked symbols in conjunction with the parody the potential infringer is trying to create.¹⁰ The Fourth Circuit also applied a standard to the parody defense, requiring that: (1) the use conveys two simultaneous contradictory messages (that it is the original, and also not the original, but a parody); (2) the differences between the products be immediately recognizable and; (3) the unauthorized use immediately conveys a joke confirming that the product was designed for expressive purposes.¹¹

This ruling opened up a whole alternative market to legally making substantially similar replicas of expensive, high fashion products, and increased the amount of potential infringers who will rely on this defense.¹² However, the one conceived notion thought to be from the case was that parody was only liable if the knockoff was a product not primarily sold by the plaintiff (i.e. Louis Vuitton rarely makes dog toys for their collection whereas Chewy Vuiton is exclusively a dog toy company).¹³ However, this proved to be wrong.

Louis Vuitton years later addressed the same issue but in the Second Circuit. In Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., the District Court and Second Circuit ruled that the parody defense could also apply to items that are a main income product to the plaintiff, such as a purse or tote bag.¹⁴ The defendant in this case, My Other Bag, produces tote bags with images of purses on the bags.¹⁵ The images of purses on the tote bags show the iconic patterns and/or designs of a similar high fashion bags, but where the high fashion logo or trademark would be, instead, there is the “MOB” logo.¹⁶ Hence, the facts that the designs are prints and the logos are swapped are the only major differences between the high fashion purses and the My Other Bag tote bags.¹⁷

Yet, the Second Circuit applies a more lax standard to the parody defense than the Fourth Circuit.¹⁸ In the Second Circuit, the court is less concerned with steps two and three of the Fourth Circuit’s parody defense analysis.¹⁹ The District Court points out that the “almost cartoonish” drawing of the Louis Vuitton bags is such a departure from the image of luxury, that it builds a significant distance between the inexpensive totes and the expensive handbags.²⁰ Yet Louis Vuitton is arguing after the ruling of the case that the Second Circuit’s analysis was too lax, and if this case were brought in the Fourth Circuit it would have had the opposite ruling.²¹

Overall, these cases provided ample ammunition for fashion replicators and counterfeiters. They provide an alternative parody defense on how almost any work could be replicated almost to a T, provided that it is printed on a different surface and the logos are replaced. There needs to be a consensus regarding fair-use and parody or there will be no reliable guidance for the fashion industry.