Brand Image Protection: We’ve all seen the bumper sticker on someone’s old beater car that says “My Other Car is A Mercedes.” Now comes the tote bag with that says in big letters on one side the trademark “MY OTHER BAG” while on the other side is depicted an image of another bag (but as a “bag within a bag – see image above) with the famous Louis Vuitton interlocking “LV” design.

In Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 14-CV-3419 (SDNY 2016) Louis Vuitton sued My Other Bag (MOB) for dilution of its trademark, i.e., the gradual whittling away of the distinctiveness of a famous mark by “blurring” The court noted hypothetical examples of dilution by blurring: Schlitz varnish, Kodak pianos, and Bulova gowns. The dilution statute specifically exempts “parodying” of a famous mark, but does not define the term. Nevertheless, the court cited precedent opinions that described parody as conveying “two simultaneous – and contradictory – messages: that it is the original, but that it is not the original and is instead a parody.” It must “communicate some articulable element of satire, ridicule, joking, or amusement.” This the MOB bag did. The court asked rhetorically whether Louis Vuitton was simply unfamiliar with the famous bumper sticker. Clearly it was, prompting the court to add: “Or maybe it just cannot take a joke.”