On December 22, 2016, the Second Circuit affirmed the
January 6, 2016 order
from Judge Furman of the Southern District of New York (SDNY), which had found
that the use of the Louis Vuitton logo and the representation of the Louis
Vuitton bags on fabric totes was fair use. The maker of the tote, My Other Bag
(MOB), was represented by David Korzenik, my former Entertainment Law professor
at Cardozo School of Law, who encouraged all his students to write and publish
and first gave me the idea to write about law.
Louis Vuitton famously designs and sells luxury bags
carrying its LV logo. These bags are often seen in first class airport lounges
all around the world, or so I’ve been told, but is it wise to use them as gym
bags or shopping bags? The founder of MOB, Tara Martin, wondered, like all of
us, if one should carry one’s Louis Vuitton bucket bag to go grocery shopping,
considering, after all, that one Louis Vuitton bag was originally
designed to carry champagne bottles (the French are so clever, non?)
Ms. Martin’s answer was to create fabric totes with one side
representing a somewhat cartoonish rendition of a famous luxury bag, such as
Hermès’ Kelly bag, Chanel’s matelassé
bag, and several models of Louis Vuitton bags, while the other side read “My
Other Bag is…”This phrase is inspired by the “My other car is a Jaguar/a
Mercedes…” bumper stickers which were once ubiquitous on automobiles of a
somewhat less expensive nature. The Louis Vuitton ‘LV’ logo are replaced on the
MOB totes by the initials MOB and are sold from $35 to $55.
Source: http://www.myotherbag.com |
Louis Vuitton considered this use to be infringing and filed
a suit against MOB, claiming trademark dilution, trademark infringement, and
copyright infringement. MOB moved for summary judgment, which was granted on
all points by Judge Furman from the SDNY.
As this blog concentrates on copyright, I will only address
this particular issue in this case (I wrote about the trademark issues of the
case here).
Judge Furman had examined all the four fair
use factors and found the use of the copyrightable elements of Louis
Vuitton’s prints to be fair use.
Judge Furman from the
SDNY: it is a parody and it is fair use
The first factor, the purpose and character of the use, was
in favor of MOB, even though the use is commercial, because the use is a parody,
which, “even when done for commercial
gain, can be fair use” (at 445). Judge Furman found that that the second
factor, the nature of the copyrighted work, was not of much help, as a parody almost
invariably copy publicly known, expressive works. The third factor, the amount
and substantiality of the portion used in relation to the copyrighted work as a
whole, was found by Judge Furman to be reasonable in relation to the purpose of
the use, because “MOB's totes must
successfully conjure Louis Vuitton's handbags in order to make sense”(at
445).
As for the fourth factor, the effect of the use upon the
potential market, Judge Furman had found that even though
“MOB's totes are, in an abstract sense, in the same market as Louis
Vuitton's handbags, its totes do not "serve[] as a market replacement
for" Louis Vuitton's bags in a way that would make "it likely that cognizable
market harm to [Louis Vuitton] will occur… [as] any reasonable observer would
grasp that the whole point of MOB's invocation of the "my other
car..." trope is to communicate that MOB's totes are not replacements for
Louis Vuitton's designer handbags. See Cariou v. Prince, 714 F.3d 694, 707 (2d
Cir.2013) ("What is critical [in evaluating a fair use defense] is how the
work in question appears to the reasonable observer.") (at 445).
The Second Circuit:
the use is transformative
The Second Circuit reviewed the summary judgment de novo and affirmed both the award of
summary judgment to MOB on Louis Vuitton’s trademark infringement claim,
trademark dilution claim, and copyright infringement claim.
The Second Circuit found that MOB's use of Louis Vuitton’s designs
was a parody which “produces a “new
expression [and] message” that constitutes transformative use…. 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.”
This case signals that the Second Circuit is continuing to
affirm the importance for a court to assess whether a particular use is
transformative when deciding whether a particular use is fair use or not.
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