16-241-cv
`Louis Vuitton Malletier S.A. v. My Other Bag, Inc.
`
`
`UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
`
`SUMMARY ORDER
`
`
`
`
`RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO A
`SUMMARY ORDER FILED ON OR AFTER JANUARY 1, 2007, IS PERMITTED AND IS GOVERNED
`BY FEDERAL RULE OF APPELLATE PROCEDURE 32.1 AND THIS COURT’S LOCAL RULE 32.1.1.
`WHEN CITING A SUMMARY ORDER IN A DOCUMENT FILED WITH THIS COURT, A PARTY
`MUST CITE EITHER THE FEDERAL APPENDIX OR AN ELECTRONIC DATABASE (WITH THE
`NOTATION “SUMMARY ORDER”). A PARTY CITING A SUMMARY ORDER MUST SERVE A
`COPY OF IT ON ANY PARTY NOT REPRESENTED BY COUNSEL.
`
`At a stated term of the United States Court of Appeals for the Second Circuit, held
`at the Thurgood Marshall United States Courthouse, 40 Foley Square, in the City of New
`York, on the 22nd day of December, two thousand sixteen.
`
`
`PRESENT: GUIDO CALABRESI,
`
`
`REENA RAGGI,
`
`
`GERARD E. LYNCH,
`Circuit Judges.
`
`
`
`
`
`----------------------------------------------------------------------
`LOUIS VUITTON MALLETIER, S.A.,
`Plaintiff-Appellant,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`MY OTHER BAG, INC.,
`Defendant-Appellee.
`----------------------------------------------------------------------
`APPEARING FOR APPELLANT:
`ROBERT D. SHAPIRO, Barack Ferrazzano
`Kirschbaum & Nagelberg LLP, Chicago,
`Illinois.
`
`
`No. 16-241-cv
`
`
`
`
`
`
`APPEARING FOR APPELLEE:
`
`DAVID S. KORZENIK (Terence P. Keegan, on
`the brief), Miller Korzenik Sommers Rayman
`LLP, New York, New York; Brian J. Philpott,
`Corey Donaldson, on the brief, Koppel, Patrick,
`Heybl & Philpott, Westlake Village, California.
`
`1
`
`
`
`
`Louis Vuitton Malletier S.A. v. My Other Bag, Inc.
`
`
`UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
`
`SUMMARY ORDER
`
`
`
`
`RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO A
`SUMMARY ORDER FILED ON OR AFTER JANUARY 1, 2007, IS PERMITTED AND IS GOVERNED
`BY FEDERAL RULE OF APPELLATE PROCEDURE 32.1 AND THIS COURT’S LOCAL RULE 32.1.1.
`WHEN CITING A SUMMARY ORDER IN A DOCUMENT FILED WITH THIS COURT, A PARTY
`MUST CITE EITHER THE FEDERAL APPENDIX OR AN ELECTRONIC DATABASE (WITH THE
`NOTATION “SUMMARY ORDER”). A PARTY CITING A SUMMARY ORDER MUST SERVE A
`COPY OF IT ON ANY PARTY NOT REPRESENTED BY COUNSEL.
`
`At a stated term of the United States Court of Appeals for the Second Circuit, held
`at the Thurgood Marshall United States Courthouse, 40 Foley Square, in the City of New
`York, on the 22nd day of December, two thousand sixteen.
`
`
`PRESENT: GUIDO CALABRESI,
`
`
`REENA RAGGI,
`
`
`GERARD E. LYNCH,
`Circuit Judges.
`
`
`
`
`
`----------------------------------------------------------------------
`LOUIS VUITTON MALLETIER, S.A.,
`Plaintiff-Appellant,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`MY OTHER BAG, INC.,
`Defendant-Appellee.
`----------------------------------------------------------------------
`APPEARING FOR APPELLANT:
`ROBERT D. SHAPIRO, Barack Ferrazzano
`Kirschbaum & Nagelberg LLP, Chicago,
`Illinois.
`
`
`No. 16-241-cv
`
`
`
`
`
`
`APPEARING FOR APPELLEE:
`
`DAVID S. KORZENIK (Terence P. Keegan, on
`the brief), Miller Korzenik Sommers Rayman
`LLP, New York, New York; Brian J. Philpott,
`Corey Donaldson, on the brief, Koppel, Patrick,
`Heybl & Philpott, Westlake Village, California.
`
`1
`
`
`
`
`
`
`
`Appeal from a judgment of the United States District Court for the Southern
`
`District of New York (Jesse M. Furman, Judge).
`
`UPON DUE CONSIDERATION, IT IS HEREBY ORDERED, ADJUDGED,
`
`AND DECREED that the judgment entered on January 8, 2016, is AFFIRMED.
`
`
`
`Plaintiff Louis Vuitton Malletier, S.A. (“LV”) appeals from an award of summary
`
`judgment in favor of My Other Bag, Inc. (“MOB”) on LV’s claims under federal and
`
`state trademark and copyright law. See 15 U.S.C. §§ 1114, 1125; 17 U.S.C. § 501; N.Y.
`
`Gen. Bus. Law § 360–l. We review an award of summary judgment de novo, construing
`
`the evidence in the light most favorable to the non-moving party and drawing all
`
`reasonable inferences in its favor. See, e.g., Cross Commerce Media, Inc. v. Collective,
`
`Inc., 841 F.3d 155, 162 (2d Cir. 2016). We assume the parties’ familiarity with the facts
`
`and record of prior proceedings, which we reference only as necessary to explain our
`
`decision to affirm for substantially the reasons stated by the district court in its thorough
`
`and well reasoned opinion. See Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 156
`
`F. Supp. 3d 425 (S.D.N.Y. 2016).
`
`1.
`
`
`
`Trademark Infringement
`
`LV submits that the district court ignored or discounted favorable record evidence
`
`during its application of the non-exclusive, eight-factor Polaroid balancing test, see
`
`Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961), and thereby
`
`wrongly concluded that there was no likelihood of consumer confusion between LV’s
`
`2
`
`
`
`
`
`
`
`and MOB’s products. The argument fails because, whether we review the district
`
`court’s findings as to each Polaroid factor deferentially, see Playtex Prods., Inc. v.
`
`Ga.-Pac. Corp., 390 F.3d 158, 162 (2d Cir. 2004), or de novo, see generally Kelly–Brown
`
`v. Winfrey, No. 15-697-CV, 2016 WL 4945415, at *2 n.3 (2d Cir. Sept. 16, 2016), we
`
`reach the same conclusion. Specifically, obvious differences in MOB’s mimicking of
`
`LV’s mark, the lack of market proximity between the products at issue, and minimal,
`
`unconvincing evidence of consumer confusion compel a judgment in favor of MOB on
`
`LV’s trademark infringement claim. Accordingly, we affirm this part of the summary
`
`judgment award to MOB.
`
`2.
`
`
`
`Trademark Dilution
`
`LV argues that the district court erred in finding as a matter of law that the use of
`
`its marks on MOB’s tote bags was parodic, bringing it within the “fair use” exclusion
`
`from dilution liability. See 15 U.S.C. § 1125(c)(3). Whether parody is properly
`
`identified before or after conducting the six-factor dilution analysis stated in
`
`§ 1125(c)(2)(B), see generally Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d
`
`97, 112 (2d Cir. 2009) (assuming without deciding that factor analysis should be
`
`conducted first), the district court correctly awarded judgment to MOB.
`
`
`
`“A parody must convey two simultaneous—and contradictory—messages: that it
`
`is the original, but also that it is not the original and is instead a parody.” Hormel Foods
`
`Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 503 (2d Cir. 1996) (quoting Cliffs Notes,
`
`3
`
`
`
`
`
`
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`Inc. v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490, 495 (2d Cir. 1989)).
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`MOB’s bags do precisely that. At the same time that they mimic LV’s designs and
`
`handbags in a way that is recognizable, they do so as a drawing on a product that is such
`
`a conscious departure from LV’s image of luxury—in combination with the slogan “My
`
`other bag”—as to convey that MOB’s tote bags are not LV handbags. The fact that the
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`joke on LV’s luxury image is gentle, and possibly even complimentary to LV, does not
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`preclude it from being a parody. See Louis Vuitton Malletier, S.A. v. My Other Bag,
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`Inc., 156 F. Supp. 3d at 435–38; see also L.L. Bean, Inc. v. Drake Publishers, Inc., 811
`
`F.2d 26, 34 (1st Cir. 1987) (“[A] trademark parody reminds us that we are free to laugh at
`
`the images and associations linked with the mark . . . [or provides] entertainment
`
`conveyed by juxtaposing the irreverent representation of the trademark with the idealized
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`image created by the mark’s owner.”). Indeed, a parody of LV’s luxury image is the
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`very point of MOB’s plebian product. That distinguishes this case from ones cited by
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`LV where a trademark was used merely to “promote” or “sell” goods and services, which
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`is impermissible. See Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d at 115
`
`(using “Charbucks” to identify coffee blend as one competing at same level and quality
`
`as Starbucks); Harley Davidson, Inc. v. Grottanelli, 164 F.3d 806, 813 (2d Cir. 1999)
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`(using Harley-Davidson logo to advertise motorcycle repair shop).
`
`
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`LV nevertheless contends that MOB is not entitled to a fair-use dilution defense
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`because MOB uses LV’s marks as a “designation of source.”
`
` 15 U.S.C.
`
`4
`
`
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`
`
`
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`§ 1125(c)(3)(A). The district court, however, determined that the testimony of MOB’s
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`CEO, upon which LV principally relies to support this argument, unambiguously refers to
`
`the likelihood of consumer confusion, not the designation of source. See Louis Vuitton
`
`Malletier, S.A. v. My Other Bag, Inc., 156 F. Supp. 3d at 437–38 (citing J.A. 350–51).
`
`Our review of the transcript does not suggest otherwise. In any event, the nature of
`
`MOB’s business—it sells quite ordinary tote bags with drawings of various luxury-brand
`
`handbags, not just LV’s, printed thereon—and the presence of “My other bag,” an
`
`undisputed designation of source, on one side of each bag, independently support
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`summary judgment for MOB on this designation-of-source issue.
`
`
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`Accordingly, we affirm the award of summary judgment to MOB on LV’s federal
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`trademark-dilution claim. We likewise affirm summary judgment to MOB on LV’s
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`state-law dilution claim. While N.Y. Gen. Bus. Law § 360–l does not provide an
`
`explicit fair-use defense, the manifest parodic use here precludes the requisite finding that
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`the marks are “substantially similar.” See Starbucks Corp. v. Wolfe’s Borough Coffee,
`
`Inc., 588 F.3d at 114 (internal quotation marks omitted).
`
`3.
`
`
`
`Copyright Infringement
`
`MOB’s parodic use of LV’s designs produces a “new expression [and] message”
`
`that constitutes transformative use. Campbell v. Acuff–Rose Music, Inc., 510 U.S. at
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`579 (alterations, citations, and internal quotation marks omitted); accord TCA Television
`
`Corp. v. McCollum, 839 F.3d 168, 180 (2d Cir. 2016). Like the district court, we
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`5
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`
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`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
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`444–45, and LV’s arguments to the contrary largely repeat or echo those we have already
`
`
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`rejected.
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`
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`Accordingly, we affirm the award of summary judgment to MOB on LV’s
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`copyright claim.
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`4.
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`Conclusion
`
`We have considered LV’s remaining arguments and conclude that they are without
`
`merit. Accordingly, the judgment of the district court is AFFIRMED.
`
`FOR THE COURT:
`CATHERINE O’HAGAN WOLFE, Clerk of Court
`
`
`6
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