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`14-CV-3419 (JMF)
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`OPINION AND ORDER
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`Defendant My Other Bag, Inc. (“MOB”) sells simple canvas tote bags with the text “My
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`Other Bag . . .” on one side and drawings meant to evoke iconic handbags by luxury designers,
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`such as Louis Vuitton, Chanel, and Fendi, on the other. MOB’s totes — indeed, its very
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`name — are a play on the classic “my other car . . .” novelty bumper stickers, which can be seen
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`on inexpensive, beat up cars across the country informing passersby — with tongue firmly in
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`cheek — that the driver’s “other car” is a Mercedes (or some other luxury car brand). The “my
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`other car” bumper stickers are, of course, a joke — a riff, if you will, on wealth, luxury brands,
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`and the social expectations of who would be driving luxury and non-luxury cars. MOB’s totes
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`are just as obviously a joke, and one does not necessarily need to be familiar with the “my other
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`car” trope to get the joke or to get the fact that the totes are meant to be taken in jest.
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`Louis Vuitton Malletier, S.A. (“Louis Vuitton”), the maker of Louis Vuitton bags, is
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`perhaps unfamiliar with the “my other car” trope. Or maybe it just cannot take a joke. In either
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`case, it brings claims against MOB with respect to MOB totes that are concededly meant to
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`evoke iconic Louis Vuitton bags. More specifically, Louis Vuitton brings claims against MOB
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`---------------------------------------------------------------------- X
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`
` :
`LOUIS VUITTON MALLETIER, S.A.,
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` Plaintiff,
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`MY OTHER BAG, INC.,
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` Defendant.
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`---------------------------------------------------------------------- X
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`JESSE M. FURMAN, United States District Judge:
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`-v-
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`01/05/2016
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`01/06/2016
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`Case 1:14-cv-03419-JMF Document 119 Filed 01/06/16 Page 2 of 31
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`for trademark dilution and infringement under the Lanham Act, 15 U.S.C. § 1125(c); a claim of
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`trademark dilution under New York law; and a claim of copyright infringement. MOB now
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`moves for summary judgment on all of Louis Vuitton’s claims; Louis Vuitton cross moves for
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`summary judgment on its trademark dilution claims and its copyright infringement claim, and
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`moves also to exclude the testimony of MOB’s expert and to strike the declarations (or portions
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`thereof) of MOB’s expert and MOB’s founder and principal. For the reasons that follow,
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`MOB’s motion for summary judgment is granted and Louis Vuitton’s motions are all denied.
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`BACKGROUND
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`The relevant facts, taken from the Complaint and admissible materials submitted in
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`connection with the pending motions, are either undisputed or described in the light most
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`favorable to Louis Vuitton. See Costello v. City of Burlington, 632 F.3d 41, 45 (2d Cir. 2011).
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`Louis Vuitton is a world-renowned luxury fashion house known for its high-quality handbags
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`and other luxury goods. (Local Civil Rule 56.1 Statement Material Facts Louis Vuitton
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`Malletier, S.A. Mot. Summ. J. (Docket No. 65) (“Louis Vuitton SOF”) ¶ 2). Louis Vuitton bags
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`often sell for thousands of dollars (see Def. My Other Bag’s Statement Undisputed Material
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`Facts Pursuant Local Civil Rule 56.1 (Docket No. 53) (“MOB SOF”) ¶ 13), and the company
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`invests substantial sums in creating and maintaining a sense of exclusivity and luxury, (see id.
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`¶ 14). As a result, several of Louis Vuitton’s designs and trademarks are famous and well-
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`recognized icons of wealth and expensive taste. In particular, Louis Vuitton’s Toile Monogram
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`design — “a repeating pattern featuring the interlocking, stylized letters ‘L’ and ‘V’ and three
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`stylized flower designs” (Louis Vuitton SOF ¶ 3), depictions of which appear in an appendix to
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`this Opinion (“Op. App.”) (see Op. App., Figs. A-B) — has become “the defining signature of
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`the Louis Vuitton brand,” (Louis Vuitton SOF ¶ 4). Louis Vuitton has registered trademarks in
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`2
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`Case 1:14-cv-03419-JMF Document 119 Filed 01/06/16 Page 3 of 31
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`the Toile Monogram (id. ¶ 6) and in the component stylized flower designs, (id. ¶ 7). Two other
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`iconic Louis Vuitton designs, the Monogram Multicolore and the Damier, have achieved
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`comparable levels of recognition and are also registered as trademarks. (See id. ¶¶ 9-21). By all
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`accounts, and as the discussion below will make clear, Louis Vuitton aggressively enforces its
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`trademark rights. (Id. ¶ 35).
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`MOB was founded by Tara Martin in 2011. (MOB SOF ¶ 11). As noted, the name “My
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`Other Bag” was inspired by novelty bumper stickers, which can sometimes be seen on
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`inexpensive cars claiming that the driver’s “other car” is an expensive, luxury car, such as a
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`Mercedes. (Decl. Tara Martin Supp. Def.’s Mot. Summ. J. (Docket No. 52) ¶ 3). MOB
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`produces and sells canvas tote bags bearing caricatures of iconic designer handbags on one side
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`and the text “My Other Bag . . .” on the other. Several of MOB’s tote bags — one of which is
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`depicted in the appendix to this Opinion (see Op. App., Figs. C-D) — display images concededly
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`designed to evoke classic Louis Vuitton bags. (See MOB SOF ¶¶ 21-22; Louis Vuitton SOF
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`¶¶ 55-59, 79-80). As the appendix illustrates, the drawings use simplified colors, graphic lines,
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`and patterns that resemble Louis Vuitton’s famous Toile Monogram, Monogram Multicolore,
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`and Damier designs, but replace the interlocking “LV” and “Louis Vuitton” with an interlocking
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`“MOB” or “My Other Bag.” (See also id. ¶¶ 47, 49). MOB markets its bags as “[e]co-friendly,
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`sustainable tote bags playfully parodying the designer bags we love, but practical enough for
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`everyday life.” (Decl. Sharon Calhoun Supp. Mot. Summ. J. Louis Vuitton Malletier, S.A.
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`(Docket No. 66) (“Calhoun Decl.”), Ex. 25 at LVMA7194). While Louis Vuitton sells its
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`handbags for hundreds, if not thousands, of dollars apiece, MOB’s totes sell at prices between
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`thirty and fifty-five dollars. (Louis Vuitton SOF ¶ 42). Its website and other marketing play up
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`the idea that high-priced designer bags cannot be used to carry around, say, dirty gym clothes or
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`3
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`Case 1:14-cv-03419-JMF Document 119 Filed 01/06/16 Page 4 of 31
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`messy groceries, while its casual canvas totes can. (Calhoun Decl., Ex. 25 at LVMA7190-
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`LVMA7192 (“[T]his luncheon worthy designer bag doesn’t fit in at the gym, BUT My Other
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`Bag . . . DOES . . . .”); see also Louis Vuitton SOF ¶ 65).
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`THE SUMMARY JUDGMENT STANDARD
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`Summary judgment is appropriate where the admissible evidence and the pleadings
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`demonstrate “no genuine dispute as to any material fact and the movant is entitled to judgment as
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`a matter of law.” Fed. R. Civ. P. 56(a); see also Johnson v. Killian, 680 F.3d 234, 236 (2d Cir.
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`2012) (per curiam). A dispute over an issue of material fact qualifies as genuine “if the evidence
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`is such that a reasonable jury could return a judgment for the nonmoving party.” Anderson v.
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`Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); accord Roe v. City of Waterbury, 542 F.3d 31, 35
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`(2d Cir. 2008). The moving party bears the initial burden of demonstrating the absence of a
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`genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986). “In
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`moving for summary judgment against a party who will bear the ultimate burden of proof at trial,
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`the movant’s burden will be satisfied if he can point to an absence of evidence to support an
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`essential element of the nonmoving party’s claim.” Goenaga v. March of Dimes Birth Defects
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`Found., 51 F.3d 14, 18 (2d Cir. 1995) (citing Celotex, 477 U.S. at 322-23); accord PepsiCo, Inc.
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`v. Coca-Cola Co., 315 F.3d 101, 105 (2d Cir. 2002) (per curiam).
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`In ruling on a motion for summary judgment, all evidence must be viewed “in the light
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`most favorable to the non-moving party,” Overton v. N.Y. State Div. of Military & Naval Affairs,
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`373 F.3d 83, 89 (2d Cir. 2004), and the court must “resolve all ambiguities and draw all
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`permissible factual inferences in favor of the party against whom summary judgment is sought,”
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`Sec. Ins. Co. of Hartford v. Old Dominion Freight Line, Inc., 391 F.3d 77, 83 (2d Cir. 2004).
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`When, as in this case, both sides move for summary judgment, the district court is “required to
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`4
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`Case 1:14-cv-03419-JMF Document 119 Filed 01/06/16 Page 5 of 31
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`assess each motion on its own merits and to view the evidence in the light most favorable to the
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`party opposing the motion, drawing all reasonable inferences in favor of that party.” Wachovia
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`Bank, Nat’l Ass’n v. VCG Special Opportunities Master Fund, Ltd., 661 F.3d 164, 171 (2d Cir.
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`2011). Thus, “neither side is barred from asserting that there are issues of fact, sufficient to
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`prevent the entry of judgment, as a matter of law, against it.” Heublein, Inc. v. United States,
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`996 F.2d 1455, 1461 (2d Cir. 1993).
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`To defeat a motion for summary judgment, a non-moving party must advance more than
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`a “scintilla of evidence,” Anderson, 477 U.S. at 252, and demonstrate more than “some
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`metaphysical doubt as to the material facts,” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio
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`Corp., 475 U.S. 574, 586 (1986). The non-moving party “cannot defeat the motion by relying on
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`the allegations in [its] pleading or on conclusory statements, or on mere assertions that affidavits
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`supporting the motion are not credible.” Gottlieb v. Cty. of Orange, 84 F.3d 511, 518 (2d Cir.
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`1996) (citation omitted). Affidavits submitted in support of, or opposition to, summary judgment
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`must be based on personal knowledge, must “set forth such facts as would be admissible in
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`evidence,” and must show “that the affiant is competent to testify to the matters stated therein.”
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`Patterson v. Cty. of Oneida, 375 F.3d 206, 219 (2d Cir. 2004) (quoting Fed. R. Civ. P. 56(e)).
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`DISCUSSION
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`As noted, Louis Vuitton asserts three categories of claims against MOB. First, Louis
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`Vuitton brings trademark dilution claims under both New York and federal law. (Compl.
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`(Docket No. 2) ¶¶ 73-80, 87-92). Second, Louis Vuitton alleges that MOB’s totes infringe its
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`trademarks under federal law. (Id. ¶¶ 58-72). And third, Louis Vuitton contends that MOB’s
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`totes violate federal copyright law. (Id. ¶¶ 81-86). The Court will address each in turn.
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`5
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`A.
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`Trademark Dilution
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`Louis Vuitton’s principal claim is that MOB is liable for trademark dilution under the
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`Lanham Act, 15 U.S.C. § 1125(c), and New York General Business Law § 360-l. The concept
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`of trademark dilution has been described as a “subtle” one, Tiffany (NJ) Inc. v. eBay, Inc., 576 F.
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`Supp. 2d 463, 521-22 (S.D.N.Y. 2008), aff’d in part, reversed in part on other grounds, and calls
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`for some explanation. “When an individual encounters a mark (e.g., a word or symbol) in a store
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`or watching a commercial, he or she can develop an association between a product or service and
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`its corresponding quality, brand reputation, or origin.” 1A Lindey on Entertainment, Publishing
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`and the Arts § 2:52.50 (3d ed., updated Jan. 2016). Anti-dilution laws protect those acquired
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`associations from being diluted by other uses of a plaintiff’s trademark. In particular, dilution by
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`blurring — the claim that Louis Vuitton pursues here — refers to the gradual diminishment of a
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`famous mark’s acquired “ability . . . to clearly and unmistakably distinguish one source through
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`unauthorized use.” Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 506 (2d Cir.
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`1996) (alteration in original) (internal quotation marks omitted); see also Allied Maint. Corp. v.
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`Allied Mech. Trades, Inc., 42 N.Y.2d 538, 544 (1977) (observing that New York law protects
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`against the “gradual whittling away of a firm’s distinctive trade-mark or name”).1 In other
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`words, “dilution occurs when the unauthorized use of a famous mark reduces the public’s
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`perception that the mark signifies something unique, singular, or particular.” H.R. Rep. No. 109-
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`23, at 4 (2005), as reprinted in 2006 U.S.C.C.A.N. 1091, 1092.
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`1
`Under federal and New York law, a trademark owner can also pursue a claim of dilution
`by tarnishment. See, e.g., Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 43 (2d Cir. 1994)
`(“‘Tarnishment’ generally arises when the plaintiff’s trademark is linked to products of shoddy
`quality, or is portrayed in an unwholesome or unsavory context likely to evoke unflattering
`thoughts about the owner’s product.”). In this case, Louis Vuitton alleges only dilution by
`blurring. (Mem. Pl. Louis Vuitton Malletier, S.A. Supp. Mot. Summ. J. (Docket No. 64) (“Louis
`Vuitton’s Mem.”) 10).
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`6
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`The classic case of dilution by blurring involves an unrelated product coopting a famous
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`name or trademark as its own — “hypothetical anomalies” such “as Dupont shoes, Buick aspirin
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`tablets, Schlitz varnish, Kodak pianos, Bulova gowns, and so forth.” Starbucks Corp. v. Wolfe’s
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`Borough Coffee, Inc., 588 F.3d 97, 106 (2d Cir. 2009) (“Starbucks Corp. I”) (internal quotation
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`marks omitted); see also Visa Int’l Serv. Ass’n v. JSL Corp., 610 F.3d 1088, 1090 (9th Cir. 2010)
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`(giving “Tylenol snowboards, Netscape sex shops and Harry Potter dry cleaners” as examples of
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`dilution by blurring (internal quotation marks omitted)). In each of those cases, the new use of
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`the famous trademark may cause “consumers [to] form new and different associations with the
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`plaintiff’s mark,” thereby diluting the value of that mark. Visa Intern., 610 F.3d at 1090. For
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`example, “the owner of a trademark for a famous handbag could sue another company that
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`begins using the trademark to refer to laundry detergent.” H.R. Rep. No. 112-647, at 5 (2012),
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`as reprinted in 2012 U.S.C.C.A.N. 559, 562; see also Hormel, 73 F.3d at 506 (“The legislative
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`history of § 368–d . . . giv[es] examples of hypothetical violations: ‘DuPont shoes, Buick aspirin
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`tablets, Schlitz varnish, Kodak pianos, Bulova gowns, and so forth.’” (quoting 1954 N.Y. Legis.
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`Ann. 49-50)). In that example, the laundry detergent’s use of the handbag’s trademark would
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`diminish the trademark’s ability to “clearly and unmistakably” identify the handbag. Over time,
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`consumers might come to identify the trademark interchangeably with both the detergent and the
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`handbag, “whittling away” the distinctiveness and value of the handbag maker’s mark. See Visa
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`Int’l, 610 F.3d at 1090 (“[D]ilution by blurring . . . occurs when a mark previously associated
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`with one product also becomes associated with a second.”).
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`To succeed on a dilution claim under federal law, a plaintiff “must prove (1) that the
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`trademark is truly distinctive or has acquired secondary meaning, and (2) a likelihood of dilution
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`. . . as a result of ‘blurring.’” Ergowerx Int’l, LLC v. Maxell Corp. of Am., 18 F. Supp. 3d 430,
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`7
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`451 (S.D.N.Y. 2014) (quoting Strange Music, Inc. v. Strange Music, Inc., 326 F. Supp. 2d 481,
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`496 (S.D.N.Y. 2004)). A plaintiff need not show economic injury. See 15 U.S.C. § 1125(c)
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`(providing for liability “regardless of the presence or absence . . . of actual economic injury”).
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`New York law is similar, but does not require proof that the plaintiff’s mark is famous. See
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`Hormel, 73 F.3d at 505-06. In assessing whether dilution by blurring is likely to occur under
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`federal law, a court “may consider all relevant factors,” including the following six statutorily
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`enumerated factors: (1) the degree of similarity between the challenged mark and the famous
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`mark; (2) the degree of distinctiveness of the famous mark; (3) the extent to which the owner of
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`the famous mark is engaging in exclusive use of the mark; (4) the degree of recognition of the
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`famous mark; (5) whether the user of the mark or trade name intended to create an association
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`with the famous mark; and (6) any actual association between the mark or trade name and the
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`famous mark. 15 U.S.C. § 1125(c)(2)(B). The analysis, however, “must ultimately focus on
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`whether an association, arising from the similarity between the subject marks, impairs the
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`distinctiveness of the famous mark” — that is, the ability of the famous mark to serve as a
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`unique identifier. Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 736 F.3d 198, 204 (2d Cir.
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`2013) (“Starbucks Corp. II”) (internal quotation marks omitted); see also N.Y. Stock Exch. v.
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`N.Y., N.Y. Hotel LLC, 293 F.3d 550, 558 (2d Cir. 2002). Under New York law, courts look to a
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`similar set of factors: “(i) the similarity of the marks; (ii) the similarity of the products covered;
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`(iii) the sophistication of the consumers; (iv) the existence of predatory intent; (v) the renown of
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`the senior mark; and (vi) the renown of the junior mark.” N.Y. Stock Exch., 293 F.3d at 558. But
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`again, those factors are only guideposts: The ultimate question under New York law is whether
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`there is a likelihood that the capacity of the senior owner’s mark “to serve as a unique identifier
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`8
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`of its source” will be diminished. Louis Vuitton Malletier v. Dooney & Bourke, Inc., 561 F.
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`Supp. 2d 368, 393 (S.D.N.Y. 2008).2
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`Significantly, federal law provides that certain uses of a mark “shall not be actionable as
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`dilution by blurring,” including:
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`Any fair use . . . of a famous mark by another person other than as a designation
`of source for the person’s own goods or services, including use in connection with
`. . . identifying and parodying, criticizing, or commenting upon the famous mark
`owner or the goods or services of the famous mark owner.
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`15 U.S.C. § 1125(c)(3).3 The statute does not define “parody,” but courts have explained that a
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`“parody” is “a simple form of entertainment conveyed by juxtaposing the irreverent
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`representation of the trademark with the idealized image created by the mark’s owner.” Louis
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`Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 260 (4th Cir. 2007) (“Haute
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`Diggity Dog”). “A parody must convey two simultaneous — and contradictory — messages:
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`that it is the original, but also that it is not the original and is instead a parody.” Cliffs Notes, Inc.
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`v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490, 494 (2d Cir. 1989). The latter
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`message “must not only differentiate the alleged parody from the original but must also
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`communicate some articulable element of satire, ridicule, joking, or amusement.” Haute Diggity
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`Dog, 507 F.3d at 260; see Cliffs Notes, 886 F.2d at 496 (stating that a work “is a parody if, taken
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`2
`MOB contends that, under the Lanham Act, a plaintiff may bring a trademark dilution
`claim only where the defendant uses the plaintiff’s mark to designate the source of its goods —
`that is, as a mark — and that it does not use Louis Vuitton’s marks in that manner. (MOB’s
`Mem. 5-9). The “mark-versus-mark” theory finds support in at least one prominent authority,
`see 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 24:122 (4th ed.,
`updated Dec. 2015), but the Court need not decide its validity in this case.
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`3
`Although New York law does not include an analogous “fair use” provision, New York
`anti-dilution law is “substantively similar” to federal law, such that claims under the two laws
`“may be analyzed together.” Tiffany, 576 F. Supp. 2d at 523. Accordingly, courts have held that
`when a defendant establishes fair use for purposes of federal law, related state law claims also
`fail. See JA Apparel Corp. v. Abboud, 682 F. Supp. 2d 294, 317 (S.D.N.Y. 2010).
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`9
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`as a whole, it pokes fun at its subject”); Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d
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`1482, 1486 (10th Cir. 1987) (“A parody relies upon a difference from the original mark,
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`presumably a humorous difference, in order to produce its desired effect.”).
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`1. Fair Use
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`Applying the foregoing standards here, the Court concludes as a matter of law that
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`MOB’s bags are protected as fair use — in particular, that its use of Louis Vuitton’s marks
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`constitutes “parody.” As noted, a successful parody communicates to a consumer that “an entity
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`separate and distinct from the trademark owner is poking fun at a trademark or the policies of its
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`owner.” 6 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 31:153
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`(4th ed., updated Dec. 2015) (“McCarthy”). In other words, a parody clearly indicates to the
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`ordinary observer “that the defendant is not connected in any way with the owner of the target
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`trademark.” Id. That is precisely what MOB’s bags communicate. Indeed, the whole point is to
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`play on the well-known “my other car . . .” joke by playfully suggesting that the carrier’s “other
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`bag” — that is, not the bag that he or she is carrying — is a Louis Vuitton bag. That joke —
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`combined with the stylized, almost cartoonish renderings of Louis Vuitton’s bags depicted on the
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`totes — builds significant distance between MOB’s inexpensive workhorse totes and the
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`expensive handbags they are meant to evoke, and invites an amusing comparison between MOB
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`and the luxury status of Louis Vuitton. Further, the image of exclusivity and refinery that Louis
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`Vuitton has so carefully cultivated is, at least in part, the brunt of the joke: Whereas a Louis
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`Vuitton handbag is something wealthy women may handle with reverent care and display to
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`communicate a certain status, MOB’s canvas totes are utilitarian bags “intended to be stuffed with
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`produce at the supermarket, sweaty clothes at the gym, or towels at the beach.” (Mem. Law Def.
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`My Other Bag, Inc. Supp. Mot. Summ. J. (Docket No. 56) (“MOB’s Mem.”) 24).
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`10
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`Louis Vuitton protests that, even if MOB’s totes are a parody of something, they are not a
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`parody of its handbags and, relatedly, that MOB’s argument is a post hoc fabrication for
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`purposes of this litigation. (Louis Vuitton’s Mem. 17-20, 23). The company notes that MOB’s
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`Chief Executive Officer, Tara Martin, has referred to its bags as “iconic” and stated that she
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`never intended to disparage Louis Vuitton. (Id. at 18-19; see also Calhoun Decl., Ex. 25, at
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`LVMA0001390 (MOB website describing its bags as “an ode to handbags women love”). Thus,
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`Louis Vuitton argues, the “My Other Bag . . .” joke mocks only MOB itself or, to the extent it
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`has a broader target, “any humor is merely part of a larger social commentary, not a parody
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`directed towards Louis Vuitton or its products.” (Id. at 19). In support of those arguments,
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`Louis Vuitton relies heavily on its victory in an unpublished 2012 opinion from this District:
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`Louis Vuitton Malletier, S.A. v. Hyundai Motor Am., No. 10-CV-1611 (PKC), 2012 WL 1022247
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`(S.D.N.Y. Mar. 22, 2012). In that case, Hyundai aired a thirty-second commercial titled
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`“Luxury,” which included “a four-second scene of an inner-city basketball game played on a
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`lavish marble court with a gold hoop.” Id. at *1. The scene also included a basketball bearing
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`marks meant to evoke the Louis Vuitton Toile Monogram. See id. The Court rejected Hyundai’s
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`parody defense based in large part on deposition testimony from Hyundai representatives that
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`conclusively established that the car company had no intention for the commercial to make any
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`statement about Louis Vuitton at all. See id. at *17-19 (excerpting deposition testimony
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`establishing that Hyundai did not mean to “criticize” or “make fun of” Louis Vuitton, or even
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`“compare the Hyundai with [Louis Vuitton]”). On the basis of that testimony, the Court
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`concluded that Hyundai had “disclaimed any intention to parody, criticize or comment upon
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`Louis Vuitton” and that the ad was only intended to make a “broader social comment” about
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`“what it means for a product to be luxurious.” Id. at *17 (internal quotation marks omitted).
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`11
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`Case 1:14-cv-03419-JMF Document 119 Filed 01/06/16 Page 12 of 31
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`The Hyundai decision is not without its critics, see, e.g., 4 McCarthy § 24:120, but, in
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`any event, this case is easily distinguished on its facts. Here, unlike in Hyundai, it is self-evident
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`that MOB did mean to say something about Louis Vuitton specifically. That is, Louis Vuitton’s
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`handbags are an integral part of the joke that gives MOB its name and features prominently on
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`every tote bag that MOB sells. In arguing otherwise, Louis Vuitton takes too narrow a view of
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`what can qualify as a parody. The quip “My Other Bag . . . is a Louis Vuitton,” printed on a
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`workhorse canvas bag, derives its humor from a constellation of features — including the
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`features of the canvas bag itself, society’s larger obsession with status symbols, and the
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`meticulously promoted image of expensive taste (or showy status) that Louis Vuitton handbags
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`have, to many, come to symbolize. The fact that MOB’s totes convey a message about more
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`than just Louis Vuitton bags is not fatal to a successful parody defense. See Campbell v. Acuff-
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`Rose Music, Inc., 510 U.S. 569, 580 (1994) (holding that a copyright parodist must show that his
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`parody, “at least in part, comments on [the parodied] author’s work” (emphasis added)); Harley-
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`Davidson, Inc. v. Grottanelli, 164 F.3d 806, 813 (2d Cir. 1999) (applying that standard to
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`trademark parody). And the fact that Louis Vuitton at least does not find the comparison funny
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`is immaterial; Louis Vuitton’s sense of humor (or lack thereof) does not delineate the parameters
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`of its rights (or MOB’s rights) under trademark law. See, e.g., Cliffs Notes, 886 F.2d at 495-96
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`(“[T]he district court apparently thought that the parody here had to make an obvious joke out of
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`the cover of the original in order to be regarded as a parody. We do not see why this is so. It is
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`true that some of the covers of the parodies brought to our attention, unlike that of [the
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`defendant], contain obvious visual gags. But parody may be sophisticated as well as slapstick; a
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`literary work is a parody if, taken as a whole, it pokes fun at its subject.” (footnote omitted)); cf.
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`Yankee Publ’g Inc. v. News Am. Publ’g Inc., 809 F. Supp. 267, 280 (S.D.N.Y. 1992) (“Although
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`Case 1:14-cv-03419-JMF Document 119 Filed 01/06/16 Page 13 of 31
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`[the defendant’s] position would probably be stronger if its joke had been clearer, the obscurity
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`of its joke does not deprive it of First Amendment support. First Amendment protections do not
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`apply only to those who speak clearly, whose jokes are funny, and whose parodies succeed.”).4
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`In those regards, another decision from this District, Tommy Hilfiger Licensing, Inc. v.
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`Nature Labs, LLC, 221 F. Supp. 2d 410, 415 (S.D.N.Y. 2002), is more on point. That case
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`involved a line of parody perfume products for use on pets. In particular, the defendant had
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`created a pet perfume called Tommy Holedigger, which resembled a Tommy Hilfiger fragrance
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`in name, scent, and packaging. See id. at 412-413. Hilfiger, like Louis Vuitton here, argued
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`(albeit in connection with a claim of trademark infringement rather than dilution) that the
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`defendant was not entitled to protection as a parody because “its product admittedly makes no
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`comment about Hilfiger.” Id. at 415. In support of that argument, Hilfiger cited testimony from
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`the defendant’s general partner that his product was not intended to make any comment about
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`Hilfiger or its products. See id. Noting that the general partner had also testified that “he was
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`intending to create a ‘parody . . . target[ing] . . . Tommy Hilfiger,’ ‘a fun play on words,’ or
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`‘spoof . . . [t]o create enjoyment, a lighter side,’” Judge Mukasey rejected Hilfiger’s argument as
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`follows:
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`Although [the general partner] had difficulty expressing the parodic content of his
`communicative message, courts have explained that:
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`Trademark parodies . . . do convey a message. The message may be
`simply that business and product images need not always be taken too
`seriously; a trademark parody reminds us that we are free to laugh at the
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`Even if Hyundai were not distinguishable, this Court would decline to follow it. In the
`Court’s view, the Hyundai Court blurred the distinction between association and dilution. As
`discussed in more detail below, association is a necessary, but not sufficient, condition for a
`finding of dilution by blurring. See, e.g., Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433
`(“[T]he mere fact that consumers mentally associate the junior user’s mark with a famous mark
`is not sufficient to establish actionable dilution. . . . [S]uch mental association will not
`necessarily reduce the capacity of the famous mark to identify the goods of its owner.”).
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`Case 1:14-cv-03419-JMF Document 119 Filed 01/06/16 Page 14 of 31
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`images and associations linked with the mark. The message also may be a
`simple form of entertainment conveyed by juxtaposing the irreverent
`representation of the trademark with the idealized image created by the
`mark’s owner.
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`Id. (quoting L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 34 (1st Cir. 1987)). He
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`added, in a comment that applies equally well here: “One can readily see why high-end fashion
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`brands would be ripe targets for such mockery.” Id.
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`Alternatively, relying principally on Dallas Cowboys Cheerleaders, Inc. v. Pussycat
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`Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979), Louis Vuitton argues that MOB’s totes cannot be a
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`parody because they do not need to use Louis Vuitton’s trademarks for the parody to make sense.
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`(Louis Vuitton’s Mem. 21-22). Strictly speaking, that is true — to the extent that MOB could
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`use any well-known luxury handbag brand to make its points. But, whereas the defendant in
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`Dallas Cowboys Cheerleaders, a purveyor of a “gross and revolting sex film,” 604 F.2d at 202,
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`did not have to use anyone else’s trademark — let alone the plaintiff’s specific trademark — to
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`make its point (allegedly, “comment[ing] on ‘sexuality in athletics,’” id. at 206), the same cannot
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`be said here. MOB’s tote bags would not make their point, and certainly would not be funny, if
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`the obverse of the tote merely depicted some generic handbag. Such a tote would confusingly
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`communicate only that “my other bag . . . is some other bag.” In other words, Louis Vuitton’s
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`argument distorts any “necessity” requirement beyond recognition, and myopically suggests that,
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`where a parody must evoke at least one of a finite set of marks in order to make its point, it can
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`evoke none of them because reference to any particular mark in the set is not absolutely
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`necessary. The Court declines to create such an illogical rule.
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`Finally, Louis Vuitton contends that the fair use exception does not apply to MOB’s totes
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`because MOB uses Louis Vuitton’s trademarks “as a designation of source for [MOB’s] own
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`goods.” (Louis Vuitton’s Mem. 17-18). After all, Section 1125(c)(3), by its terms, protects
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`Case 1:14-cv-03419-JMF Document 119 Filed 01/06/16 Page 15 of 31
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`“[a]ny fair use . . . of a famous mark by another person other than as a designation of source for
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`the person’s own goods or services.” 15 U.S.C. § 1125(c)(3) (emphasis added); see also Haute
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`Diggity Dog, 507 F.3d at 266 (“Under the statute’s plain language, parodying a famous mark is
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`protected by the fair use defense only if the parody is not ‘a designation of source for the
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`person’s own goods or services.’”). But given the overall design of MOB’s tote bags (the
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`identical, stylized text “My Other Bag . . .” on one side and differing caricatures on the other
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`side), and the fact that the bags evoke a range of luxury brands with different graphics, there is
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`no basis to conclude that MOB uses Louis Vuitton’s marks as a designation of source for its tote
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`bags. Indeed, as noted, that is the whole point of MOB’s joke: “My other bag” — that is, not
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`this bag — is a Louis Vuitton handbag. That joke