Sunday, 8 January 2017

Fair Use? It’s in the bag

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.
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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