Professional Documents
Culture Documents
IN THE
Supreme Court of the United States
_______________
LOUIS VUITTON MALLETIER, S.A.,
Petitioner,
v.
TABLE OF CONTENTS
Page
QUESTION PRESENTED...........................................i
PARTIES TO THE PROCEEDING AND RULE
29.6 STATEMENT ............................................... ii
TABLE OF APPENDICES ......................................... v
TABLE OF AUTHORITIES ....................................... vi
PETITION FOR A WRIT OF CERTIORARI ............. 1
OPINIONS BELOW .................................................... 1
JURISDICTION .......................................................... 1
CONSTITUTIONAL AND STATUTORY
PROVISIONS INVOLVED ................................... 1
INTRODUCTION ........................................................ 1
STATEMENT .............................................................. 4
REASONS FOR GRANTING THE PETITION ....... 17
I. THIS COURTS REVIEW IS WARRANTED TO
RESOLVE CONFUSION OVER THE TEST FOR
IDENTIFYING PARODY IN TRADEMARK
DILUTION CASES ............................................ 18
A. The Second Circuits Test For Identifying
Parody In Trademark Dilution Cases
Conflicts With The Fourth Circuits
Approach ................................................ 18
B. The Second Circuits Parody Test
Confuses Trademark Dilution With
Trademark Infringement ....................... 26
C. The Second Circuits Expansion Of Fair
Use Upends Congresss Balance Between
Trademark Protections And First
Amendment Expression ......................... 32
iv
TABLE OF APPENDICES
Page
APPENDIX A:
Opinion of the U.S. Court of Appeals for the
Second Circuit ..................................................... 1a
APPENDIX B:
Order of the U.S. District Court for the
Southern District of New York ........................... 7a
APPENDIX C:
Order of the U.S. Court of Appeals for the
Second Circuit denying rehearing .................... 44a
APPENDIX D:
Judgment of the U.S. District Court for the
Southern District of New York ......................... 45a
APPENDIX E:
Constitutional provisions and statutes
involved in this case.......................................... 48a
First Amendment ....................................... 48a
15 U.S.C. 1125 ......................................... 48a
vi
TABLE OF AUTHORITIES
Page(s)
Cases
Anheuser-Busch, Inc. v. VIP Prods.,
LLC,
666 F. Supp. 2d 974 (E.D. Mo. 2008)................... 22
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994) ...................... 25, 26, 31, 33, 34
Dallas Cowboys Cheerleaders, Inc. v.
Scoreboard Posters, Inc.,
600 F.2d 1184 (5th Cir. 1979) .............................. 34
Dr. Seuss Enters., LP v. Penguin Books
USA, Inc.,
109 F.3d 1394 (9th Cir. 1997) .............................. 27
Eldred v. Ashcroft,
537 U.S. 186 (2003) .............................................. 33
Elvis Presley Enters., Inc. v. Capece,
141 F.3d 188 (5th Cir. 1998) .......................... 27, 36
Fendi Adele S.R.L. v. Filenes Basement,
Inc.,
696 F. Supp. 2d 368 (S.D.N.Y. 2010) ................... 31
Fisher v. Dees,
794 F.2d 432 (9th Cir. 1986) ................................ 34
Hana Fin., Inc. v. Hana Bank,
135 S. Ct. 907 (2015) ............................................ 25
Hershey Co. v. Art Van Furniture, Inc.,
No. 08-cv-14463, 2008 WL 4724756
(E.D. Mich. Oct. 24, 2008).............................. 22, 24
vii
STATEMENT
1. Over timeand often through the expenditure
of significant expense and effort by the trademark
ownertrademarks can come to produce an associa-
tion in the minds of consumers between a good and its
quality, kind, and reputation. See H.R. Rep. No. 109-
23, at 4 (2005). A claim for dilution by blurring pro-
tects against the diminishment of a marks ability to
produce that association. Id. The harm from dilution
often occurs graduallythrough a type of death by a
thousand cutswhere significant injury is caused by
the cumulative effect of many separate acts of dilu-
tion. Id. at 25 (statement of Rep. Berman); see also id.
at 4 (explaining that dilution occurs when the unau-
thorized use of a famous mark reduces the publics
perception that the mark signifies something unique,
singular, or particular). For example, consumers see
Chiquita and think banana; using Chiquita as a
furniture brand would diminish the association that
consumers have between Chiquita and bananas, and
would therefore constitute dilution by blurring. 1
Congress first provided a cause of action for trade-
mark dilution in the Federal Trademark Dilution Act
of 1995 (FTDA). In Moseley v. V Secret Catalogue,
Inc., 537 U.S. 418 (2003), this Court construed the
FTDA to require that plaintiffs alleging trademark di-
lution prove actual dilution, not simply a likelihood
of dilution. Id. at 433.
In response, Congress passed the TDRA, which,
among other significant amendments, overruled
Jessica Biel
Jessica Alba
14
4 Other courts have noted that Haute Diggity Dog relied on dif-
ferences in kind to find parody. See, e.g., Louis Vuitton Malletier
S.A. v. Sunny Merch. Corp., 97 F. Supp. 3d 485, 499 n.6 (S.D.N.Y.
2015) (distinguishing Haute Diggity Dog on the basis that it re-
lied on differences in kind between products); Anheuser-Busch,
Inc. v. VIP Prods., LLC, 666 F. Supp. 2d 974, 985 (E.D. Mo. 2008)
(distinguishing Haute Diggity Dog in dog toy case where plaintiff
also sold dog toys on the basis that Louis Vuitton did not sell dog
toys); Hershey Co. v. Art Van Furniture, Inc., No. 08-cv-14463,
2008 WL 4724756, at *16 (E.D. Mich. Oct. 24, 2008) (explaining
that an important theme running through Haute Diggity Dog
is that a parodic use must be so different that no one could pos-
sibly mistake it for the real thing).
23
* * *
Certiorari is necessary to resolve the split be-
tween the Second and Fourth Circuits regarding the
test for identifying parody in dilution cases, to remedy
the confusion about the distinctions between trade-
mark dilution and trademark infringement, and to re-
store Congresss carefully crafted balance between
statutory protections against trademark dilution and
First Amendment rights.
36
Respectfully submitted.
CAITLIN J. HALLIGAN THEODORE B. OLSON
GIBSON, DUNN & CRUTCHER LLP Counsel of Record
200 Park Avenue HOWARD S. HOGAN
New York, NY 10166 AMIR C. TAYRANI
(212) 351-3909 CHRISTOPHER J. BAUM
GIBSON, DUNN & CRUTCHER LLP
ROBERT E. SHAPIRO 1050 Connecticut Avenue, N.W.
WENDI E. SLOANE Washington, D.C. 20036
BARACK FERRAZZANO (202) 955-8500
KIRSCHBAUM & tolson@gibsondunn.com
NAGELBERG LLP
200 W. Madison Street
Suite 3900
Chicago, IL 60606
(312) 984-3100
APPENDIX A
16-241-cv
Louis Vuitton Malletier S.A. v. My Other Bag, Inc.
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 GOV-
ERNED BY FEDERAL RULE OF APPELLATE
PROCEDURE 32.1 AND THIS COURTS LOCAL
RULE 32.1.1. WHEN CITING A SUMMARY OR-
DER IN A DOCUMENT FILED WITH THIS
COURT, A PARTY MUST CITE EITHER THE
FEDERAL APPENDIX OR AN ELECTRONIC
DATABASE (WITH THE NOTATION SUM-
MARY ORDER). A PARTY CITING A SUM-
MARY ORDER MUST SERVE A COPY OF IT ON
ANY PARTY NOT REPRESENTED BY COUN-
SEL.
At a stated term of the United States Court of Ap-
peals 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.
2a
Plaintiff-Appellant,
v. No. 16-241-cv
MY OTHER BAG, INC.,
Defendant-Appellee.
APPENDIX B
LOUIS VUITTON
MALLETIER, S.A.,
Plaintiff,
14-CV-3419 (JMF)
-v-
OPINION AND ORDER
MY OTHER BAG,
INC.,
Defendant.
trope to get the joke or to get the fact that the totes
are meant to be taken in jest.
Louis Vuitton Malletier, S.A. (Louis Vuitton),
the maker of Louis Vuitton bags, is perhaps unfamil-
iar with the my other car trope. Or maybe it just
cannot take a joke. In either case, it brings claims
against MOB with respect to MOB totes that are con-
cededly meant to evoke iconic Louis Vuitton bags.
More specifically, Louis Vuitton brings claims against
MOB for trademark dilution and infringement under
the Lanham Act, 15 U.S.C. 1125(c); a claim of trade-
mark dilution under New York law; and a claim of cop-
yright infringement. MOB now moves for summary
judgment on all of Louis Vuittons claims; Louis Vuit-
ton cross moves for summary judgment on its trade-
mark dilution claims and its copyright infringement
claim, and moves also to exclude the testimony of
MOBs expert and to strike the declarations (or por-
tions thereof) of MOBs expert and MOBs founder and
principal. For the reasons that follow, MOBs motion
for summary judgment is granted and Louis Vuittons
motions are all denied.
BACKGROUND
The relevant facts, taken from the Complaint and
admissible materials submitted in connection with
the pending motions, are either undisputed or de-
scribed in the light most favorable to Louis Vuitton.
See Costello v. City of Burlington, 632 F.3d 41, 45 (2d
Cir. 2011). Louis Vuitton is a world-renowned luxury
fashion house known for its high-quality handbags
and other luxury goods. (Local Civil Rule 56.1 State-
ment Material Facts Louis Vuitton Malletier, S.A.
Mot. Summ. J. (Docket No. 65) (Louis Vuitton SOF)
2). Louis Vuitton bags often sell for thousands of
9a
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) (Tarnish-
ment generally arises when the plaintiffs trademark is linked to
products of shoddy quality, or is portrayed in an unwholesome or
unsavory context likely to evoke unflattering thoughts about the
owners product.). In this case, Louis Vuitton alleges only dilu-
tion by blurring. (Mem. Pl. Louis Vuitton Malletier, S.A. Supp.
Mot. Summ. J. (Docket No. 64) (Louis Vuittons Mem.) 10).
14a
2
MOB contends that, under the Lanham Act, a plaintiff may
bring a trademark dilution claim only where the defendant uses
the plaintiffs mark to designate the source of its goods that is,
as a mark and that it does not use Louis Vuittons marks in
that manner. (MOBs 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 Com-
petition 24:122 (4th ed., updated Dec. 2015), but the Court need
not decide its validity in this case.
17a
3
Although New York law does not include an analogous fair
use provision, New York anti-dilution law is substantively sim-
ilar 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).
18a
1. Fair Use
Applying the foregoing standards here, the Court
concludes as a matter of law that MOBs bags are pro-
tected as fair use in particular, that its use of Louis
Vuittons marks constitutes parody. As noted, a suc-
cessful parody communicates to a consumer that an
entity separate and distinct from the trademark
owner is poking fun at a trademark or the policies of
its owner. 6 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition 31:153 (4th
ed., updated Dec. 2015) (McCarthy). In other words,
a parody clearly indicates to the ordinary observer
that the defendant is not connected in any way with
the owner of the target trademark. Id. That is pre-
cisely what MOBs bags communicate. Indeed, the
whole point is to play on the well-known my other car
... joke by playfully suggesting that the carriers
other bag that is, not the bag that he or she is
carrying is a Louis Vuitton bag. That joke com-
bined with the stylized, almost cartoonish renderings
of Louis Vuittons bags depicted on the totes builds
significant distance between MOBs inexpensive
workhorse totes and the expensive handbags they are
meant to evoke, and invites an amusing comparison
between MOB and the luxury status of Louis Vuitton.
Further, the image of exclusivity and refinery that
Louis Vuitton has so carefully cultivated is, at least in
part, the brunt of the joke: Whereas a Louis Vuitton
handbag is something wealthy women may handle
with reverent care and display to communicate a cer-
tain status, MOBs canvas totes are utilitarian bags
intended to be stuffed with produce at the supermar-
ket, sweaty clothes at the gym, or towels at the beach.
(Mem. Law Def. My Other Bag, Inc. Supp. Mot.
Summ. J. (Docket No. 56) (MOBs Mem.) 24).
19a
4
Even if Hyundai were not distinguishable, this Court would
decline to follow it. In the Courts view, the Hyundai Court
blurred the distinction between association and dilution. As dis-
cussed 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 users
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.).
22a
6
Louis Vuittons Complaint also raises a claim for false desig-
nation of source. (See Compl. 67-72). As discussed above, MOB
does not use Louis Vuittons trademarks as a designation of
source. In any event, false designation of source claims, like
trademark infringement claims, require a plaintiff to demon-
strate a likelihood of consumer confusion. See Waldman Publg
30a
Corp. v. Landoll, Inc., 43 F.3d 775, 780 (2d Cir. 1994). As ex-
plained in this section, Louis Vuitton cannot meet that burden.
31a
7
Both parties filed some of their briefs under seal. Although
there is a presumption in favor of public access to judicial docu-
ments, the Court does not reference or otherwise rely on sealed
facts in reaching its decision. The weight of that presumption is,
therefore, limited. See Lugosch v. Pyramid Co. of Onondaga, 435
F.3d 110, 119 (2d Cir. 1006) ([T]he weight to be given the pre-
sumption of access must be governed by the role of the material
at issue in the exercise of Article III judicial power and the re-
sultant value of such information to those monitoring the federal
courts. (quoting United States v. Amodeo, 71 F.3d 1044, 1049 (2d
Cir.1995))). As for competing considerations that counsel in favor
of allowing the parties to file their briefs under seal, the privacy
interests of the parties in preventing the public disclosure of pri-
vate business figures and communications are not insignificant.
The Court therefore concludes that the balance of interests is in
favor of allowing the parties briefs to be filed under seal. Leave
to file under seal is therefore granted.
42a
Appendix
APPENDIX C
APPENDIX D
LOUIS VUITTON
MALLETIER, S.A.,
Plaintiff
14-CIVIL-3419 (JMF)
-v-
JUDGMENT
MY OTHER BAG,
INC.,
Defendant.
APPENDIX E