20 January, 2017

My Other Joke - 'Getting' the Joke not Relevant to Parody, Says US Court of Appeals

Jokes are rarely ubiquitous, and one that you might get won't necessarily translate as well to your friends, which even could be construed as offensive by some. This clear subjectivity when it comes to humor is well known by most, but this has been rarely introduced as an argument in a court of law (at least in this writer's knowledge). With that said, would 'getting' a joke be a part of the considerations surrounding parody or satire, or would a genuine attempt at being funny be such, even if some don't 'get' the joke? A question many didn't know they wanted to know the answer to was addressed recently by the US Court of Appeals.

The case of Louis Vuitton Malletier SA v. My Other Bag, Inc. dealt with the sale of canvas tote bags by My Other Bag, which feature the name of the company on one side and a caricature image of iconic and well-known designer handbags on the other, including brands like Louis Vuitton Chanel, and Fendi. The joke is a carry-over from bumper stickers with the wording "my other car" that plays to the idea of owning both the luxury item and an inexpensive alternative (without actually having the former, most likely). Louis Vuitton didn't take well to the use of their designs on MOB's tote bags and took the company to court for trademark infringement, trademark dilution and copyright infringement.

Daniela didn't understand why she was arrested because of
her 'other' bag
The Court of Appeals dealt with the matter of trademark infringement first, and quickly saw that there was no infringement by MOB as there were "…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". This follows the decision by the District Court of New York at first instance, who determined that while the mark and its use are similar, there are clear, distinctive differences that distinguish MOB's image of Louis Vuitton's design, and that the two products compete in an entirely different marketplace (with Louis Vuitton clearly catering to an exclusive, luxury market, and MOB to a very casual market).

The Court then moved onto the question of trademark dilution (a case of using a well-known trademark in a different product type entirely, diminishing the distinctive value of the original mark), which at first instance was dismissed due to the defence of fair use through parody by MOB. Similarly to the above consideration, the Court of Appeals didn't take long to explain their findings, affirming that "…[MOB's bags] 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… as to convey that MOB's tote bags are not LV handbags". Even though Louis Vuitton's marks were used, albeit in a humorous way, they still did not act as a 'designation of source', since the bags did have the MOB branding present in addition to the caricature image that shows a clear designation of origin contrary to Louis Vuitton. Clearly the trademark couldn't have been diluted in any way, as the products didn't cross over into each other's markets, nor shared features that would lead to them being confused by consumers.

The final point of consideration was that of copyright infringement, which the Court dispatched in very short terms. The Court saw that "…MOB's parodic use of LV's designs produces a "new expression [and] message" that constitutes transformative use". This, in addition to the benefit derived from the remaining fair use considerations or their irrelevancy to the matter, aided MOB's case under copyright infringement, with the claim being dismissed entirely. One can appreciate the transformative use of Louis Vuitton's designs, as the cartoonish image along with a changed logo (featuring, instead of the LV logo, a MOB version of the same) made the design something new through its humorous portrayal of the design. Ultimately, the Court of Appeals dismissed Louis Vuitton's appeal entirely.

The case illustrates the strength in a genuine parody defence, and as was discussed by Justice Furman "...the fact that Louis Vuitton at least does not find the comparison funny is immaterial; Louis Vuitton's sense of humor (or lack thereof) does not delineate the parameters of its rights (or MOB's rights) under trademark law". Many proprietors of high-end, well-known brands might not like, or even get, the parodies that make fun of them, but the law should allow this type of commentary or use, provided it is bona fide parody. It serves these brands well to pick their fights carefully, since a well placed joke can make fun of you, but rash acts of litigation can do more damage.

Source: JDSupra

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