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No.

IN THE
Supreme Court of the United States
_______________
LOUIS VUITTON MALLETIER, S.A.,
Petitioner,
v.

MY OTHER BAG, INC.,


Respondent.
_______________
On Petition For A Writ Of Certiorari
To The United States Court Of Appeals
For The Second Circuit
_______________

PETITION FOR A WRIT OF CERTIORARI


_______________
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
Counsel for Petitioner
QUESTION PRESENTED
The Trademark Dilution Revision Act provides
owners of famous and distinctive marks with a rem-
edy for dilution of those marks by blurring. 15 U.S.C.
1125(c)(1). The Act also provides that [a]ny fair
use, . . . including use in connection with . . . parody-
ing the goods and services of the famous mark owner,
is not actionable as dilution by blurring. Id.
1125(c)(3)(A)(ii). Louis Vuitton owns several famous
and distinctive marks that it uses to sell, among other
things, handbags. My Other Bag, Inc. sells handbags
with images of famous handbags, including Louis
Vuittons, drawn on the side. The Second Circuit held
that My Other Bags use of Louis Vuittons marks con-
stitutes parody and therefore is not actionable as di-
lution under the Act. The court reached that conclu-
sion even though it did not hold that the differences
between the products are immediately conveyed or
that My Other Bags use is intended for expressive
purposes rather than to free-ride on Louis Vuittons
famous marksan expansive approach to parody that
seriously undermines the Acts overriding objective of
safeguarding famous marks against dilution.
The question presented is:
Whether the Second Circuits test for determining
if the unauthorized use of a famous mark constitutes
parody is consistent with the Trademark Dilution Re-
vision Act.
ii

PARTIES TO THE PROCEEDING


AND RULE 29.6 STATEMENT
The caption contains the names of all the parties
to the proceeding below.
Pursuant to this Courts Rule 29.6, undersigned
counsel states that Louis Vuitton Malletier, S.A. is a
privately owned French Socit Anonyme that is
wholly owned by LVMH Met Hennessy Louis Vuitton
SE, which is publicly held.
iii

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

II. THE QUESTION PRESENTED HAS PROFOUND


IMPORTANCE FOR OWNERS OF FAMOUS AND
DISTINCTIVE MARKS ...................................... 36
CONCLUSION .......................................................... 38
v

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

Mississippi ex rel. Hood v. AU Optronics


Corp.,
134 S. Ct. 736 (2014) ............................................ 34
Hormel Foods Corp. v. Jim Henson
Prods., Inc.,
73 F.3d 497 (2d Cir. 1996) ............................. 21, 27
KP Permanent Make-Up, Inc. v. Lasting
Impression I, Inc.,
543 U.S. 111 (2004) ................................................ 6
Levi Strauss & Co. v. Abercrombie &
Fitch Trading Co.,
633 F.3d 1158 (9th Cir. 2011) ................................ 5
Louis Vuitton Malletier S.A. v. Haute
Diggity Dog, LLC,
507 F.3d 252
(4th Cir. 2007) ...... 18, 19, 20, 21, 22, 23, 24, 28, 30
Louis Vuitton Malletier, S.A. v. Hyundai
Motor Am.,
No. 10-cv-1611, 2012 WL 1022247
(S.D.N.Y. Mar. 22, 2012)...................................... 24
Louis Vuitton Malletier S.A. v. Sunny
Merch. Corp.,
97 F. Supp. 3d 485 (S.D.N.Y. 2015) ..................... 22
Moseley v. V Secret Catalogue, Inc.,
537 U.S. 418 (2003) .......................................... 4, 38
People for the Ethical Treatment of
Animals v. Doughney,
263 F.3d 359 (4th Cir. 2001) ................................ 27
Perfumebay.com Inc. v. eBay, Inc.,
506 F.3d 1165 (9th Cir. 2007) ........................ 28, 31
viii

Starbucks Corp. v. Wolfes Borough


Coffee, Inc.,
736 F.3d 198 (2d Cir. 2013) ........................... 36, 38
Starbucks Corp. v. Wolfes Borough
Coffee, Inc.,
588 F.3d 97 (2d Cir. 2009) ................................... 30
Suntrust Bank v. Houghton Mifflin Co.,
268 F.3d 1257 (11th Cir. 2001) ............................ 34
Tiffany (NJ) Inc. v. eBay Inc.,
600 F.3d 93 (2d Cir. 2010) ................................... 28
Visa Intl Serv. Assn v. JSL Corp.,
610 F.3d 1088 (9th Cir. 2010) ........................ 29, 32
White v. Samsung Elecs. Am., Inc.,
971 F.2d 1395 (9th Cir. 1992), as
amended (Aug. 19, 1992) ............................... 25, 31
Statutes
15 U.S.C. 1125(c)(1) ........................ 2, 5, 6, 26, 28, 31
15 U.S.C. 1125(c)(2) .............................................. 4, 5
15 U.S.C. 1125(c)(3) ............................................ 6, 29
Other Authorities
Amazon.com,
https://tinyurl.com/y8nkejrg (last
visited July 13, 2017) ........................................... 15
H.R. Rep. No. 109-23 (2005)...................... 4, 26, 33, 36
ix

Trademark Dilution Revision Act of


2005: Hearing on H.R. 683 Before
the H. Subcomm. on Courts, the
Internet & Intellectual Property of
the H. Comm. on the Judiciary,
109th Cong. (2005) ............................................... 33
PETITION FOR A WRIT OF CERTIORARI

Louis Vuitton Malletier, S.A. (Louis Vuitton) re-


spectfully petitions for a writ of certiorari to review
the judgment of the United States Court of Appeals
for the Second Circuit.
OPINIONS BELOW
The opinion of the court of appeals is unpublished,
but is available at 674 F. Appx 16 (2d Cir. Dec. 22,
2016). Pet. App. 1a-6a. The court of appeals order
denying rehearing and rehearing en banc is unre-
ported. Pet. App. 44a. The district courts decision is
reported at 156 F. Supp. 3d 425. Pet. App. 7a-43a.
JURISDICTION
The court of appeals entered its judgment on De-
cember 22, 2016. Pet. App. 1a. On February 13, 2017,
the court of appeals denied a timely petition for re-
hearing and rehearing en banc. Pet. App. 44a. On
May 9, 2017, Justice Ginsburg extended the time
within which to file a petition for a writ of certiorari
until July 13, 2017. No. 16A1082. This Court has ju-
risdiction under 28 U.S.C. 1254(1).
CONSTITUTIONAL AND STATUTORY
PROVISIONS INVOLVED
Pertinent constitutional and statutory provisions
are reproduced at Pet. App. 48a.
INTRODUCTION
Owners of widely recognized trademarks often ex-
pend vast resources and years of effort to ensure that
their marks are immediately and solely associated
with the owners products. These marksknown as
famous marksare entitled to heightened protec-
tion under federal law. Louis Vuitton, for example,
2

has devoted more than a century to developing, pro-


moting, and protecting trademarks that are univer-
sally recognized symbols of the companys products
and that constitute a guarantee of the products origin
and quality. A Louis Vuitton trademark immediately
brings to mind Louis Vuitton as the sole source of
handbags and other stylish, high-quality goods bear-
ing its marks.
Respondent My Other Bag, Inc. (MOB) sought to
capitalize on the distinctiveness and positive public
perception of Louis Vuittons marks by marketing oth-
erwise-ordinary canvas bags bearing its famous
marks on one side and the words My Other Bag . . .
on the other. In so doing, MOB created a risk that the
public will no longer associate Louis Vuittons marks
only with Louis Vuittons high-end products but will
also associate the marks with MOBs work-a-day
bags.
Congress recognized this very risk when it en-
acted the Trademark Dilution Revision Act (TDRA),
which provides a cause of action to prevent dilution
by blurring where the unauthorized use of a famous
and distinctive mark threatens to undermine the as-
sociation between the mark and the trademark
owners products. 15 U.S.C. 1125(c)(1). Louis Vuit-
ton brought a dilution-by-blurring claim against MOB
to protect the distinctiveness of its marks, but the Sec-
ond Circuit held that MOBs use of Louis Vuittons
marks is not actionable because it supposedly consti-
tutes parody and therefore qualifies as fair use.
In reaching that result, the Second Circuit created
a direct conflict with the Fourth Circuit regarding the
test for identifying parody under the TDRA. The
Fourth Circuit requires that a parody immediately
convey that the famous mark owners products and
3

the unauthorized products are different and immedi-


ately communicate a joke that confirms that the un-
authorized use is intended for an expressive purpose.
The Second Circuit required neither of these elements
when it concluded that MOBs use of Louis Vuittons
marks is a parody. To the contrary, it held that the
parody exception to the TDRA is available even if the
purported parody is gentle or even complimentary.
Pet. App. 4a.
The Second Circuits novel conception of parody
creates significant uncertainty for all owners of fa-
mous marks, who are confronted with divergent par-
ody tests depending on the jurisdiction in which suit
is filed. The Second Circuits decision also vastly ex-
pands the fair-use exception beyond the narrow
bounds that Congress intended, leaving famous
marks vulnerable to widespread dilution through the
production of imitation products marketed under the
guise of parody. The spread of products like those at
issue heredesigned to appeal to fans of the products
that are supposedly being parodied rather than com-
ment on, criticize, or make fun of those productspre-
sents exactly the type of harm that the TDRA was de-
signed to prevent, the slow loss of the distinctiveness
of the famous mark.
Confusion among courts about the TDRAs dilu-
tion protectionsand the associated erosion of valua-
ble intellectual-property rightsshould not be per-
mitted to persist. The Court should grant review to
announce a nationally uniform parody test that vindi-
cates Congresss intent to protect trademark owners
against the irreversible dilution of their famous and
distinctive marks.
4

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

1 Dilution by tarnishment, in contrast, protects against the as-


sociation of the famous mark with something that is vulgar or
otherwise injurious to the marks reputation. 15 U.S.C.
1125(c)(2)(C).
5

Moseley by requiring the plaintiff to prove only a like-


lihood of dilution, rather than actual dilution. 15
U.S.C. 1125(c)(1). The TDRA did not merely make
surgical linguistic changes to the FTDA, but instead
created a new, more comprehensive federal dilution
act that substantially eased the burden of establish-
ing a claim for dilution. Levi Strauss & Co. v. Aber-
crombie & Fitch Trading Co., 633 F.3d 1158, 1166 (9th
Cir. 2011).
The TDRA provides that the owner of a famous
mark that is distinctive . . . shall be entitled to an in-
junction against another person who, at any time af-
ter the owners mark has become famous, commences
use of a mark or trade name in commerce that is likely
to cause dilution by blurring. 15 U.S.C. 1125(c)(1).
A famous mark is one that is widely recognized by
the general consuming public . . . as a designation of
source of the goods or services of the marks owner.
Id. 1125(c)(2)(A).
The TDRA makes clear that, to establish dilution
by blurring, there is no requirement that the marks
be identical; instead, it is sufficient for the plaintiff to
demonstrate an association arising from the similar-
ity between a mark . . . and a famous mark that im-
pairs the distinctiveness of the famous mark. 15
U.S.C. 1125(c)(2)(B). The Act provides a list of six
non-exclusive factors that inform whether a use is
likely to impair the distinctiveness of a famous mark,
including the degree of similarity between the
mark . . . and the famous mark and [w]hether the
user of the mark or trade name intended to create an
association with the famous mark. Id.
1125(c)(2)(B)(i)-(vi).
6

Consumer confusionwhich is often the critical


inquiry in trademark-infringement cases, see KP Per-
manent Make-Up, Inc. v. Lasting Impression I, Inc.,
543 U.S. 111, 117 (2004)is expressly irrelevant to
trademark dilution. See 15 U.S.C. 1125(c)(1) (in-
junction available regardless of the presence or ab-
sence of actual or likely confusion). Whether the
goods are competing and whether the trademark
owner asserting dilution has suffered any economic
injury are likewise irrelevant. See id. (injunction
available regardless of the presence or absence . . . of
competition, or of actual economic injury).
At the same time, the TDRA ensures adequate
breathing room for First Amendment expression by
providing that [a]ny fair use, . . . including use in
connection with . . . identifying and parodying, criti-
cizing, or commenting upon the famous mark owner
or the goods and services of the famous mark owner,
is not actionable as dilution by blurring. 15 U.S.C.
1125(c)(3)(A)(ii). The fair-use defense is not availa-
ble where the defendant is using the famous mark as
a designation of sourcei.e., to identify its own
products. See id. 1125(c)(3)(A).
2. Petitioner Louis Vuitton is a premier fashion
house, founded in Paris in 1854, that owns some of the
worlds most valuable luxury brands. Louis Vuitton is
world-famous for its high-quality handbags, luggage,
apparel, and many other fashion and luxury goods.
This case involves three groups of trademarks owned
by Louis Vuitton: the Toile Monogram, the Monogram
Multicolore, and the Damier. It is undisputed that
each of these Louis Vuitton marks is famous and in-
contestable.
7

The Toile Monogram, the defining signature of the


Louis Vuitton brand, is a repeating pattern featuring
the interlocking, stylized letters L and V and three
distinctive stylized flower designs:

The Monogram Multicolore trademarks are a var-


iation of the Toile Monogram trademark, created in
collaboration with the famous Japanese artist Ta-
kashi Murakami:
8

And the Damier trademark is a distinctive check-


ered pattern of light and dark colors, with an unusual
contrast of weft and warp:

Among other products, Louis Vuitton produces


canvas bags bearing a Louis Vuitton trademark, in-
cluding some of its most popular bags, such as the
NEVERFULL and the SPEEDY. ECF No. 66-2, at
5. These canvas bags have also included cotton can-
vas tote bags, such as the Cabas Monogram Eponge
bagpart of a seasonal collection introduced in
2005and cotton canvas beach bags:
9

3. Since 2013, respondent MOB has sold hand-


bags with images of designer handbags, including
Louis Vuittons, displayed on one side of the bags. For
example, MOBs London bag is nearly covered on
one side by an image of Louis Vuittons
NEVERFULL bag, bearing either the Multicolore
Trademarks or the Damier Trademarks.
The images of Louis Vuittons bags are intended
to look similar to the real designs, with only minor al-
terations. MOB touts on its website that one must
look closely at its London and Zoey bags to find
a MOB surprise in [the] pattern!the replacement of
the famous, interlocking LV logo with MOB in sim-
ilar interlocking letters. Similarly, some MOB bags
copying the Damier Trademarks include My Other
Bag in tiny text in a handful of the squares.
10

My Other Bag bags | Louis Vuitton bags


11
12

On most MOB bags, the words My Other Bag . . .


are printed only on the side opposite to the side dis-
playing the images of Louis Vuittons bags. As a re-
sult, those words are often not visible at the same time
as the images of Louis Vuittons bags.

MOB markets its bags to consumers who own or


wish to own Louis Vuitton bags. According to MOBs
founder, Tara Martin, a typical MOB consumer has a
self-proclaimed hand bag obsession and carries My
Other Bag to the gym or pool instead of or with her
actual designer bag. ECF No. 98-27, at 2. MOBs
website describes its handbags as an ode to handbags
women love. . . . [H]er go to bag, her dream bag, her
going out bag. My Other Bag is the perfect comple-
ment to these bags we love! Carry it in addition to
your designer handbag or alone as you tackle your
days To Do List. . . . Its the perfect other bag! ECF
No. 98-25, at 4. MOB even promised to try and in-
13

clude images of particular Louis Vuitton bags in fu-


ture offerings in response to customers who would
love to buy [MOBs product] as a compl[e]ment to
those Louis Vuitton bags. ECF No. 98-28, at 2.
MOBs website also promotes images of celebrities
carrying MOB bags, sometimes alongside their Louis
Vuitton bags, frequently showing only the side of the
MOB bag that prominently displays the image of a
Louis Vuitton bag.

Jessica Biel

Jessica Alba
14

MOB likewise uses social media to promote its


products to fans of Louis Vuitton, repeatedly featuring
Louis Vuitton bags in its marketing, either by them-
selves or next to an MOB bag depicting a Louis Vuit-
ton bag, in order to cement an association among con-
sumers between Louis Vuitton and MOB.

Until this suit was filed, MOBs website and so-


cial-media pages did not make any mention of a par-
ody. MOB admitted, however, that after this litiga-
tion was initiated, it added language to its website
claiming that it was playfully parodying designer
handbags. Pet. App. 10a. MOBs founder admitted
that she could not recall ever having criticized Louis
Vuittons bags before the lawsuit and that she
wouldnt say that MOBs bags were meant to criti-
ciz[e] Louis Vuitton. ECF No. 66-3, at 9-10.
15

MOB does not limit its use of Louis Vuittons


marks to handbags. It also licenses its name and its
copies of Louis Vuittons marks to The Face Shop, a
company that sells makeup products with the same
images of Louis Vuittons marks displayed on the la-
bel. 2

Louis Vuitton has never authorized any of MOBs


uses of its marks.
4. Louis Vuitton sued MOB in the Southern Dis-
trict of New York, seeking damages and injunctive re-
lief for trademark dilution, among other claims. In
January 2016, the district court granted MOBs mo-
tion for summary judgment. Pet. App. 40a-41a.
The district court concluded that there could be
no dispute that Louis Vuittons trademarks are fa-
mous and distinctive, and that Louis Vuitton had
made a factual showing on each of the statutory blur-
ring factors listed in the TDRA. Pet. App. 26a, 28a-
29a. The district court nevertheless held that MOB

2 Amazon.com, https://tinyurl.com/y8nkejrg (last visited July


13, 2017).
16

had established the affirmative defense of fair use be-


cause MOBs use of Louis Vuittons marks constitutes
parody. Pet. App. 17a-25a. In reaching that conclu-
sion, the district court rejected Louis Vuittons argu-
ment that MOB is using Louis Vuittons marks as a
designation of source, which would have rendered
MOB ineligible for the fair-use defense. Pet. App. 24a-
25a. 3
5. The Second Circuit affirmed, holding that
MOBs use of Louis Vuittons marks on its handbags
constitutes parody and does not fall within the desig-
nation-of-source exception. Pet. App. 4a-6a.
In the Second Circuits view, MOBs use of Louis
Vuittons marks is parodic because MOBs bags con-
vey two simultaneousand contradictorymessages:
that [they are] the original[s], but also that [they are]
not the original[s] and [are] instead . . . parod[ies].
Pet. App. 4a. The court reasoned that MOBs bags
mimic LVs designs and handbags in a way that is
recognizable, but also in a way that is such a con-
scious departure from LVs image of luxuryin com-
bination with the slogan My other bagas to convey
that MOBs tote bags are not LV handbags. Pet. App.
4a.
The Second Circuit further stated that the fact
that the joke on LVs luxury image is gentle, and pos-
sibly even complimentary to LV, does not preclude it
from being a parody. Pet. App. 4a. According to the
court, a parody of LVs luxury image is the very point
of MOBs plebian product, which, the court reasoned,

3 The district court also granted MOB summary judgment on


Louis Vuittons state-law dilution claim as well as its trademark
infringement and copyright infringement claims. Those claims
are not at issue in this petition.
17

distinguished this case from dilution cases where


trademarks were used to promote or sell goods and
services. Pet. App. 5a.
Based on its conclusion that MOBs use consti-
tutes parody, the Second Circuit held that MOB was
entitled to the fair-use defense. Pet. App. 5a-6a. The
court therefore deemed it unnecessary to address the
statutory blurring factors and concluded that Louis
Vuittons dilution-by-blurring claim was foreclosed as
a matter of law. Pet. App. 6a.
REASONS FOR GRANTING THE PETITION
Certiorari is warranted because the Second Cir-
cuits expansive conception of parody in trademark di-
lution cases conflicts with the Fourth Circuits parody
test. Unlike the Second Circuit, the Fourth Circuit
requires that a parody immediately convey that the
famous mark owners products and the unauthorized
products are different and immediately communicate
a joke that makes clear that the unauthorized use is
intended for an expressive purpose. If the Second Cir-
cuit had applied that test here, it would have been
compelled to conclude that MOBs use of Louis Vuit-
tons marks to market its handbags to the same con-
sumers who own, or would like to own, a Louis Vuitton
bag is not a parody but an effort to create associations
withand free-ride onLouis Vuittons famous
marks, in order to sell its own products.
The Second Circuits approach to parody is also
fundamentally inconsistent with the TDRA because it
confuses trademark dilution with trademark infringe-
ment by relying on considerationssuch as likelihood
of confusionthat Congress has made clear have no
relevance in the dilution setting. The Second Circuits
18

adoption of its capacious parody test dramatically re-


stricts the availability of trademark dilution claims,
in direct contravention of Congresss intent in the
TDRA to make a dilution remedy broadly available to
trademark owners subject only to a First Amendment
safety valve for fair use.
This Courts intervention is necessary to establish
a nationally uniform test for identifying parody in di-
lution cases, to restore the careful balance between
trademark protections and First Amendment rights
that Congress struck in the TDRA, and to prevent the
widespread, irreversible devaluation of famous
marks.
I. THIS COURTS REVIEW IS WARRANTED TO
RESOLVE CONFUSION OVER THE TEST FOR
IDENTIFYING PARODY IN TRADEMARK DILUTION
CASES.
This Court should grant review to provide clarity
regarding the standard for identifying parody in
trademark dilution cases and to reject the Second Cir-
cuits flawed approach.
A. The Second Circuits Test For Identifying
Parody In Trademark Dilution Cases Con-
flicts With The Fourth Circuits Approach.
The Second Circuits permissive approach to iden-
tifying parody in dilution cases is impossible to recon-
cile with the Fourth Circuits circumscribed parody
standard.
1. In Louis Vuitton Malletier S.A. v. Haute Dig-
gity Dog, LLC, 507 F.3d 252 (4th Cir. 2007), the
Fourth Circuit adopted an exacting test for identifying
parody in dilution cases. There, a dog toy manufac-
turer sold a plush pet chew toy called Chewy Vuiton,
19

with a shape and design that loosely imitate[d] a


Louis Vuitton handbag. Id. at 258. The toys were
mostly distributed and sold through pet stores, and
generally sold for less than $20. Id.
Haute Diggity Dog chew toys

The Fourth Circuit concluded that the pet toys


constituted parody and affirmed summary judgment
for the defendant on Louis Vuittons trademark dilu-
tion claim. Haute Diggity Dog, 507 F.3d at 269-70.
Although the defendant could not satisfy the TDRAs
fair-use defense because it used the marks as a des-
ignation of source, id. at 266, the Fourth Circuits
parody finding heavily influenced its analysis of the
statutory blurring factors and its conclusion that
Louis Vuitton had failed to establish likelihood of di-
lution. Id. at 266-68.
The Fourth Circuit began its parody analysis by
asking whether the use convey[ed] two simultane-
ousand contradictorymessages: that it is the orig-
inal, but also that it is not the original and is instead
a parody. Haute Diggity Dog, 507 F.3d at 260. Ap-
plying that framework, the Fourth Circuit held that
the defendants use constituted parody for three rea-
sons.
20

First, the court concluded that the pet chew toy


was obviously an irreverent, and indeed intentional,
representation of a[ ] [Louis Vuitton] handbag, albeit
much smaller and coarser. Haute Diggity Dog, 507
F.3d at 260. In other words, it was an obvious imita-
tion.
Second, the court reasoned that the chew toy in-
stantly conveyed that it was not the idealized image
of Louis Vuittons products because the differences be-
tween the pet chew toy and Louis Vuittons handbags
were immediate. Haute Diggity Dog, 507 F.3d at
260. Those differences beg[an] with the fact that the
Chewy Vuiton product is a dog toy, not an expensive,
luxury LOUIS VUITTON handbag. The toy is
smaller, it is plush, and virtually all of its designs dif-
fer. Id. Additional distinctions included that the de-
signs on the dog toy are simplified and crude, not de-
tailed and distinguished. The toys are inexpensive;
the handbags are expensive and marketed to be ex-
pensive. Id. As a result, it was immediately evident
to the court that the dog toy undoubtedly and delib-
erately conjures up Louis Vuittons marks, but at
the same time, it communicates that it is not the
[Louis Vuitton] product. Id.
Third, the court concluded that the intended joke,
too, was instantly evident: The juxtaposition of the
similar and dissimilarthe irreverent representation
and the idealized image of a[ ] [Louis Vuitton] hand-
bagimmediately convey[ed] a joking and amusing
parody. Haute Diggity Dog, 507 F.3d at 260-61. The
dog toy, as something to be chewed by a dog, poke[d]
fun at the elegance and expensiveness of a LOUIS
VUITTON handbag, which must not be chewed by a
dog. Id. at 261. Louis Vuittons products are carried
21

by celebrities, the court continued, while Chewy


Vuitons products were designed to mock the celeb-
rity and be used by a dog . . . irreverently present[ing]
haute couture as an object for casual canine destruc-
tion. Id. In short, the satire [wa]s unmistakable.
Id.
Thus, according to the Fourth Circuit, the chew
toy constituted parody of Louis Vuittons products be-
cause it was obviously an imitation, the differences be-
tween the products were instantly apparent, and the
joke was immediately communicated and thereby con-
firmed that the unauthorized use was designed to
serve an expressive purpose.
2. Although the Second Circuit purported to ap-
ply the same standard as the Fourth Circuit in deter-
mining whether MOBs use of Louis Vuittons marks
constituted parody, the parody standard applied in
Haute Diggity Dog was in fact far more rigorous than
that applied by the Second Circuit. Had the Second
Circuit applied the Fourth Circuits approach, it could
not have concluded that MOBs use is parody.
The starting point for the Second Circuits parody
analysis was the same as the Fourth Circuits: The
Second Circuit inquired whether MOBs use con-
vey[s] two simultaneousand contradictorymes-
sages: that it is the original, but also that it is not the
original and is instead a parody. Pet. App. 4a (quot-
ing Hormel Foods Corp. v. Jim Henson Prods., Inc., 73
F.3d 497, 503 (2d Cir. 1996)). And, as in Haute Diggity
Dog, MOBs use is obviously an intentional repre-
sentation of a Louis Vuitton handbag. It is
shaped . . . like a handbag; its monogram mimics
[Louis Vuittons] LV mark; the repetitious design
22

clearly imitates the design on the [Louis Vuitton]


handbag; and the coloring is similar. Haute Diggity
Dog, 507 F.3d at 260.
But the remainder of the Second Circuits parody
analysis bears no resemblance to the Fourth Circuits
stringent parody inquiry. Unlike the Fourth Circuit,
the Second Circuit did not impose anything approach-
ing a requirement that the differences between the
products be immediately recognizable. For example,
the Fourth Circuit placed great weight on the fact that
the Chewy Vuiton dog toy was different in kind from
Louis Vuittons handbags. See Haute Diggity Dog, 507
F.3d at 260. 4 In evaluating potential product differ-
ences, however, the Second Circuit accorded no signif-
icance to the facts that both Louis Vuittons products
and MOBs products are handbags, that the designs of
the two companies products are virtually identical,
and that both companies market their products to the
same consumers for the same purposewomen seek-
ing stylish, sophisticated, and versatile bags.

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

In the face of these similarities, the Second Circuit


relied on two facts to conclude that the differences be-
tween MOBs bags and Louis Vuittons bags are nev-
ertheless sufficiently clear to permit a finding of par-
ody: that MOBs bags are a conscious departure from
[Louis Vuittons] image of luxury, and that MOB is
using Louis Vuittons marks in combination with the
slogan My other bag on the side of the bag that does
not display Louis Vuittons marks. Pet. App. 4a. But
the Fourth Circuit did not simply consider whether
the pet chew toy conveyed an image of luxury or dis-
played markings distinguishing it from Louis Vuit-
tons products. It emphasized that the products in
question were fundamentally distinct because one
was an inexpensive, crudely designed, plush chew toy
for dogs and the other was a handbag for women, see
Haute Diggity Dog, 507 F.3d at 260an analysis of
the type of product at issue that carried no weight
with the Second Circuit. Moreover, the My Other
Bag . . . slogan on which the Second Circuit relied
usually is not even visible when Louis Vuittons mark
on the other side of the bag is being displayed, which
means that, in a large number of settings, the differ-
ences between MOBs bags and Louis Vuittons bags
cannot possibly be immediately apparent. See supra
at 13-14 (images from MOBs website showing celeb-
rities carrying its bags, as well as MOBs bags next to
what appears to be a real Louis Vuitton bag, without
displaying the My Other Bag . . . slogan).
Nor did the Second Circuit impose any require-
ment that the unauthorized use immediately convey
a joke confirming that the product was designed for
expressive purposes, as the Fourth Circuit did. Haute
24

Diggity Dog, 507 F.3d at 260-61. 5 In finding parody,


the Fourth Circuit relied on its conclusion that the
joke arose from the application of Louis Vuittons de-
signs to a ludicrously different kind of product, a dog
toy. Id. Here, however, the supposed juxtaposition
of the similar and dissimilar (id. at 260) between
MOBs handbags and Louis Vuittons handbags does
not immediately convey the joke. Indeed, MOBs imi-
tation is not something to be chewed by a dog, id. at
261; it is something to be used as a handbag, just like
Louis Vuittons handbags. It is not designed to mock
the celebrity; it is designed to be used by a celebrity
to proudly display to the public and the press. Id.
And, of course, the My Other Bag sloganthe crux
of the purported jokeis usually not visible at the
same time as Louis Vuittons marks.
The Second Circuit acknowledged that the joke
that MOB is supposedly seeking to convey may be lost
on many observers, but did not view it as an impedi-
ment to parody. According to the Second Circuit,
[t]he fact that the joke on [Louis Vuittons] luxury im-
age is gentle, and possibly even complimentary to
[Louis Vuitton], does not preclude it from being a par-
ody. Pet. App. 4a (emphasis added).
The similarities between MOBs handbags and
Louis Vuittons handbagsas well as the absence of
an immediately apparent joke confirming that MOB

5 See also Louis Vuitton Malletier, S.A. v. Hyundai Motor Am.,


No. 10-cv-1611, 2012 WL 1022247, at *20 (S.D.N.Y. Mar. 22,
2012) (The instances of parody that Hyundai cites involve over-
the-top, unmistakable parodies of an original. (citing Haute Dig-
gity Dog)); Hershey, 2008 WL 4724756, at *15 (remarking that in
Haute Diggity Dog there was no mistaking the intentional, yet
irreverent nature of the defendants miniature handbags).
25

intended an expressive usemake clear that the Sec-


ond Circuit would have been required to conclude that
MOBs use does not constitute parody if it had applied
the same parody standard as the Fourth Circuit. At a
minimum, it would have reversed the order granting
summary judgment and remanded because fact-in-
tensive questions of commercial impressionsuch as
the effect of MOBs use on a consumerfal[l] com-
fortably within the ken of a jury, rather than a judge
on summary judgment. Hana Fin., Inc. v. Hana Bank,
135 S. Ct. 907, 911 (2015).
A reasonable jury would readily have concluded
that MOB does not use Louis Vuittons marks to con-
vey an immediately apparent joke (or any joke at all)
but to free-ride on the fame and distinctiveness of
Louis Vuittons marks to sell its own handbags. See
White v. Samsung Elecs. Am., Inc., 971 F.2d 1395,
1401 & n.3 (9th Cir. 1992), as amended (Aug. 19, 1992)
(rejecting parody argument where purpose of parody
was not poking fun, but was to sel[l] products by
attempt[ing] to take a free ride on fame of celebrity).
As this Court explained in Campbell v. Acuff-Rose
Music, Inc., 510 U.S. 569 (1994), the claim to fairness
in borrowing from anothers work diminishes . . . (if it
does not vanish) where a parody is created to get at-
tention or to avoid the drudgery in working up some-
thing fresh. Id. at 580. It is clear that MOB is using
Louis Vuittons marks to draw attention to its hand-
bags and to take advantage of the fame and wide-
spread recognition of Louis Vuittons marks, not for
an expressive purpose. In fact, MOBs website pro-
claims that it uses Louis Vuittons marks to attract
the attention and business of consumers who have a
hand bag obsession. ECF No. 98-27, at 2. MOB only
26

updated its website to reference its supposed parody


after this litigation was initiated, which renders its
fair-use defense inherently suspect. See supra at 14;
see also Campbell, 510 U.S. at 600 (Kennedy, J., con-
curring) (courts must take care to ensure that not
just any commercial takeoff is rationalized post hoc as
a parody).
Only this Court can ensure that assertions of par-
ody are evaluated under the same standard no matter
the forum in which suit is filed. In the absence of this
Courts review, dilution claims against similar prod-
ucts will continue to yield disparate conclusions about
parody depending on the court that decides the is-
suean outcome directly at odds with Congresss in-
tent to establish nationally uniform trademark dilu-
tion standards when it enacted the TDRA. See H.R.
Rep. No. 109-23, at 4, 5-6 (explaining purpose to pro-
mote uniformity).
B. The Second Circuits Parody Test Con-
fuses Trademark Dilution With Trade-
mark Infringement.
Certiorari is warranted not only because the cir-
cuits are applying conflicting approaches to parody in
the dilution setting but also because the circuitsin-
cluding the Second Circuit in this case and even the
Fourth Circuit in Haute Diggity Doghave repeat-
edly confused the concepts of trademark dilution and
trademark infringement when making parody deter-
minations in dilution cases.
Under the TDRA, injunctive relief is available
based on a likelihood of dilution regardless of the
presence or absence of actual or likely confusion, of
competition, or of actual economic injury. 15 U.S.C.
27

1125(c)(1). Yet, in determining whether MOBs use


constitutes parody and thus is not actionable as dilu-
tion by blurring, the Second Circuit considered both
whether MOBs use is confusing to consumers and
whether MOBs use competes with Louis Vuittons.
That flawed approach undercuts both the text of the
TDRA and the very concept of trademark dilution.
1. In conflict with the TDRA, the Second Circuit
considered consumer confusion in determining
whether MOBs use constitutes parody by erroneously
importing the test for parody from the trademark in-
fringement context.
To determine whether a use constitutes parody in
the trademark infringement setting, courts assess
whether the use conveys two simultaneousand con-
tradictory messages: that it is the original, but also
that it is not the original and is instead a parody.
Hormel Foods, 73 F.3d at 503. If a use conveys both
messages, it is a successful parody for purposes of
trademark infringement because trademark infringe-
ment depends in large part on the likelihood of con-
sumer confusion. Dr. Seuss Enters., LP v. Penguin
Books USA, Inc., 109 F.3d 1394, 1405 (9th Cir. 1997).
Establishing that the use conveys the message that it
is not the original significantly diminish[es] the risk
of consumer confusion. People for the Ethical Treat-
ment of Animals v. Doughney, 263 F.3d 359, 366 (4th
Cir. 2001); see also Elvis Presley Enters., Inc. v.
Capece, 141 F.3d 188, 199 (5th Cir. 1998) (a success-
ful parody . . . sends the message that it is not the
original and is a parody, thereby lessening any poten-
tial confusion).
28

But applying this two-message test to determine


whether trademark dilution is actionable directly con-
travenes the text of the TDRA. Owners of famous
marks are entitled to injunctions to protect against
the likelihood of dilution regardless of the presence
or absence of actual or likely confusion. 15 U.S.C.
1125(c)(1). Treating a use as parody because it
meets a standard designed to ensure that consumers
are not confused turns the statute on its head. It de-
fies credulity to suggest that Congress provided that
dilution by blurring is actionable regardless of confu-
sion in Section 1125(c)(1) and then turned around in
Section 1125(c)(3) and provided that a use is a parody
and therefore not actionable as dilution by blurring
when it is not confusing to consumers.
The mismatch between the trademark infringe-
ment test for parody and the trademark dilution set-
ting is underscored by the fact that protections
against trademark dilution are aimed at conduct that,
in many cases, would not qualify as trademark in-
fringement. See Perfumebay.com Inc. v. eBay, Inc.,
506 F.3d 1165, 1182 n.11 (9th Cir. 2007) (dilution and
likelihood of confusion tests are directed at different
actions); see also Tiffany (NJ) Inc. v. eBay Inc., 600
F.3d 93, 111 (2d Cir. 2010) (same). The harm result-
ing from dilution is the blurring of the distinctiveness
of the famous markthe lessening of the mental as-
sociation of the famous mark with the corresponding
product. Thus, even a use that is unlikely to confuse
(e.g., Chiquita furniture) can be likely to cause dilu-
tion. See Haute Diggity Dog, 507 F.3d at 268 (explain-
ing that dilution can occur even though a consumer
would be unlikely to confuse the manufacturer of
KODAK film with the hypothetical producer of
29

KODAK pianos). If one hears Chiquita and thinks


furniture, dilution has occurred even if one under-
stands that the source of the furniture is not the same
as the source of the bananas.
Indeed, where a use conveys two simultaneous
and contradictorymessages (that it is and is not the
product) the likelihood of dilution is actually increased
because the consumer, seeing the famous mark, im-
mediately understands that the product originates
from somewhere other than the owner of the famous
mark, thereby impairing its distinctiveness by dilut-
ing the association between the famous mark and the
goods it usually denotes. For that reason, Congress
excepted from fair use any use of a mark as a desig-
nation of source. 15 U.S.C. 1125(c)(3).
The Second Circuit nevertheless applied the two-
message test to determine whether MOBs use con-
stitutes parody that renders its use non-actionable as
dilution, Pet. App. 4a-5a, and placed dispositive
weight on the conclusion that MOBs bags simultane-
ously convey that they are the original and that they
are not the original. Pet. App. 4a. In so doing, the
Second Circuit overrode Congresss explicit command
that dilution be assessed regardless of the presence
or absence of actual or likely confusion and created a
gaping hole in the statutory protections against dilu-
tion. 15 U.S.C. 1125(c)(3). After all, [d]ilution isnt
confusion; quite the contrary. Dilution occurs when
consumers form new and different associations with
the plaintiffs mark. Visa Intl Serv. Assn v. JSL
Corp., 610 F.3d 1088, 1090 (9th Cir. 2010). And here,
MOBs use of Louis Vuittons marks on a product sim-
ilar in kind inevitably produces new and different as-
sociations with Louis Vuittons marks in the minds of
30

consumerseven if MOBs bags convey that they are


not the original.
The Second Circuit is not alone in conflating
trademark dilution and trademark infringement
when making parody determinations under the
TDRA. The Fourth Circuit, too, has imported the
two-message test from trademark infringement into
the trademark dilution setting. Haute Diggity Dog,
507 F.3d at 260. Although the Fourth Circuits ver-
sion of that test is far more exacting than the Second
Circuits permissive approachand could not have led
to a finding of parody in this caseboth courts are la-
boring under the same fundamental misimpression
about the applicability of infringement concepts in the
dilution setting.
In the absence of this Courts review, there is a
serious risk that other circuits will blindly follow the
lead of the Second and Fourth Circuits by erroneously
invoking infringement likelihood of confusion prin-
ciples that the TDRA expressly makes irrelevant to
dilution claims.
2. The Second Circuits parody analysis further
departed from the TDRA by incorrectly analyzing
whether MOBs use competes with Louis Vuittons use
of its famous marks. In concluding that MOBs use
qualifies as parody, the court contrasted this case with
cases where a trademark was used merely to pro-
mote or sell goods and services. Pet. App. 5a (dis-
tinguishing Starbucks Corp. v. Wolfes Borough Coffee,
Inc., 588 F.3d 97, 115 (2d Cir. 2009), on the basis that
the mark was used to identify a product competing at
[the] same level and quality as the famous mark).
31

The court concluded that MOBs use qualified as par-


ody because MOBs plebian product did not compete
with Louis Vuittons luxury handbags. Pet. App. 5a.
To be sure, courts must consider how products are
being used in determining whether a use constitutes
parody, including whether a famous mark is being
used to increase sales by free-riding on the association
between the famous mark and the authorized product.
See Campbell, 510 U.S. at 578-85. But whether a
product is unlawfully free-riding on the famous
marks association and distinctiveness does not de-
pend on whether it is a directly competing product; it
depends on the intent behind the unauthorized use.
See White, 971 F.2d at 1401 (explaining that [t]he dif-
ference between a parody and a knock-off is the dif-
ference between fun and profit). 6
Like the Second Circuits consideration of confu-
sion, the courts consideration of competitionrather
than the sellers purposeas part of the parody deter-
mination ignored the plain language of the TDRA.
[C]ompetition is expressly irrelevant to whether a
use is dilutive. 15 U.S.C. 1125(c)(1). Courts have
therefore recognized that [d]ilution . . . protects the
distinctiveness of a particular mark whether or not
the products compete and that even non-competing
uses can impinge their value. Perfumebay.com, 506
F.3d at 1182 n.11. In fact, the archetypal example of

6 See also Fendi Adele S.R.L. v. Filenes Basement, Inc., 696 F.


Supp. 2d 368, 391 (S.D.N.Y. 2010) (Filenes use of the Fendi
Marks . . . [on] counterfeit merchandise . . . dilutes the quality of
the Marks by diminishing their capacity to identify and distin-
guish the Fendi Products.).
32

a dilutive use is one that is entirely unrelated to the


product bearing the famous mark. See, e.g., Visa Intl,
610 F.3d at 1090 (providing Tylenol snowboards,
Netscape sex shops and Harry Potter dry cleaners as
examples). Thus, the fact that MOBs bags may not
directly compete with Louis Vuittons bags should
have played no role in the Second Circuits parody
analysis. The Second Circuit instead should have fo-
cused on the fact that MOBs intent in using Louis
Vuittons marks is to free-ride on Louis Vuittons fame
and goodwill, rather than to communicate an expres-
sive message.
Taken together, the Second Circuits considera-
tion of consumer confusion and competition in deem-
ing MOBs use to be parody extends the parody con-
cept to dilutive uses that Congress never intended to
exempt from liability. This Court should grant review
and clarify the applicable test for establishing a par-
ody defense under the TDRA before these errors are
replicated in other circuits, further eroding the essen-
tial trademark protections that Congress established
in the TDRA.
C. The Second Circuits Expansion Of Fair
Use Upends Congresss Balance Between
Trademark Protections And First Amend-
ment Expression.
The Second Circuits expansive conception of par-
ody also disrupts the careful balance that Congress
sought to strike in the TDRA between providing pro-
tections against trademark dilution and preserving
First Amendment freedoms. The Second Circuits fail-
ure to consider whether MOB is using Louis Vuittons
marks for an expressive purpose protected by the
33

First Amendment further confirms the flaws in its


parody standard and the need for this Courts review.
When drafting the TDRA to restore broad statu-
tory protections against dilution, Congress adopted an
amendment in subcommittee to address the First
Amendment and free speech issues that were raised
at a hearing on the bill. H.R. Rep. No. 109-23, at 25
(statement of Rep. Berman). [C]oncerned with the
balance between the rights of trademark holders and
the First Amendment, the ACLU and other groups
craft[ed] a separate exemption from a dilution cause
of action for parody, comment and criticism. Id. That
exemption, which became Section 1125(c)(3), was de-
signed to ensure that the expansion of dilution pro-
tection . . . is appropriately balanced against First
Amendment considerations. Trademark Dilution Re-
vision Act of 2005: Hearing on H.R. 683 Before the H.
Subcomm. on Courts, the Internet & Intellectual
Property of the H. Comm. on the Judiciary, 109th
Cong. 18 (2005) (statement of Anne Gundelfinger,
then-President of the International Trademark Asso-
ciation).
In attempting to balance the expansion of trade-
mark dilution protections with First Amendment con-
cerns, Congress was not drafting on a blank slate. In
Campbell, this Court had set forth a test for determin-
ing whether parody constitutes fair use within the
meaning of the Copyright Act of 1976. 510 U.S. at
577-94. As this Court subsequently explained, that
test is a traditional First Amendment safeguar[d].
Eldred v. Ashcroft, 537 U.S. 186, 220 (2003); see also
id. at 219 (describing fair use as a built-in First
Amendment accommodatio[n]). The Court explained
in Campbell that parody may or may not be fair use
34

and that the suggestion that any parodic use is pre-


sumptively fair has no more justification in law or fact
than the equally hopeful claim that any use for news
reporting should be presumed fair. 510 U.S. at 581;
see also id. (parody, like any other use, has to work
its way through the relevant factors, and be judged
case by case, to determine whether the use is fair).
In determining whether a parody constitutes fair use
in the copyright setting, courts must consider, among
other factors, whether a parodys commentary has no
critical bearing on the substance or style of the origi-
nal composition, which the alleged infringer merely
uses to get attention or to avoid the drudgery in work-
ing up something fresh; if so, the use does not qualify
as fair use. Id. at 580. 7
It can be presumed that Congress was aware of
this Courts decision in Campbell when it enacted the
TDRA and intended to establish a parody framework
in the trademark setting that was consistent with the
copyright standard endorsed by this Court in Camp-
bell. See Mississippi ex rel. Hood v. AU Optronics
Corp., 134 S. Ct. 736, 742 (2014) (this Court pre-
sume[s] that Congress is aware of existing law when
it passes legislation). An expansive approach to par-
ody that applied the fair-use exception where First
Amendment interests are not implicated would be at
odds with Campbells First Amendment focus and
with Congresss objective in the TDRA to provide ro-
bust protections against trademark dilution.

7 Other courts have similarly explained in the copyright con-


text that not every parody is a fair use. Suntrust Bank v.
Houghton Mifflin Co., 268 F.3d 1257, 1272 (11th Cir. 2001); see
also Fisher v. Dees, 794 F.2d 432, 434 n.2 (9th Cir. 1986); Dallas
Cowboys Cheerleaders, Inc. v. Scoreboard Posters, Inc., 600 F.2d
1184, 1188 (5th Cir. 1979).
35

Yet, the Second Circuit held that MOB was enti-


tled to invoke the TDRAs fair-use exception without
undertaking any particularized consideration of
whether application of the exception was necessary to
protect First Amendment interests. In fact, it is clear
that MOB is not using Louis Vuittons marks for an
expressive purpose protected by the First Amendment
but is instead doing so to capitalize on Louis Vuittons
fame to sell its own handbags. This is not the type of
conduct that Congress intended to shield from dilu-
tion liability when it enacted the parody exception to
safeguard First Amendment interests.
The Second Circuits failure to evaluate whether
MOBs use of Louis Vuittons marks implicates First
Amendment concerns upends the delicate balance
Congress struck in the TDRA between expanding
trademark dilution protections and preserving First
Amendment rights. By extending the fair-use exemp-
tion well beyond what the First Amendment requires,
the Second Circuit departed from this Courts decision
in Campbell and the policies animating the TDRA,
and significantly impaired the trademark dilution
protections that Congress has repeatedly acted to ex-
pand and reinforce.

* * *
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

II. THE QUESTION PRESENTED HAS PROFOUND


IMPORTANCE FOR OWNERS OF FAMOUS AND
DISTINCTIVE MARKS.
The question presented in this case has far-reach-
ing significance for countless owners of famous and
distinctive marks that, like Louis Vuitton, depend on
the protections of the TDRA to safeguard their intel-
lectual property against improper dilutive uses.
Congress has repeatedly made clear the im-
portance of the statutory protections against trade-
mark dilution. Not only did Congress enact the FTDA
to protect trademark owners against dilution, but, af-
ter this Courts decision in Moseley scaled back those
protections, Congress responded quickly by enacting
the TDRA. See H.R. Rep. No. 109-23, at 5 (explaining
purpose of amendment); see also Starbucks Corp. v.
Wolfes Borough Coffee, Inc., 736 F.3d 198, 206 (2d Cir.
2013) (Starbucks II) (same). In so doing, Congress
expanded the statutory protections against dilution
and reaffirmed the profound real-world significance of
those measures. See H.R. Rep. No. 109-23, at 4 (di-
lution can result in the loss of the marks distinctive-
ness and, in worst-case scenarios, the owners rights
in it).
In derogation of those congressional objectives,
the Second Circuits expansive definition of parody
will inevitably facilitate widespread dilution of fa-
mous and distinctive marks. Under the Second Cir-
cuits approach, all knock-offs of famous products with
even a tenuous claim to a joke could qualify as parody,
even if the two products are of the same kind and tar-
get the same consumers. But see Capece, 141 F.3d at
198-99 ([T]he cry of parody! does not magically fend
off otherwise legitimate claims of trademark infringe-
ment or dilution.). Hawkers of imitation goods who
37

market their wares as less expensive alternatives to


the famous products will be able to operate without
any realistic threat of liability for trademark dilution.
Any subtle satire could qualify, including the satire
(claimed here) that owning the original would be too
expensive, which is the point of nearly all rip-offs.
For example, the Second Circuits decision would
shield the following products from trademark dilution
liability under the TDRA:
My Other Sunglasses (using Ray-Bans mark);
My Other Cola (using Coca-Colas mark);
My Other Shoe (using New Balances mark);
My Other Watch (using Rolexs mark);
My Other Pen (using Montblancs mark); and
My Other Phone (using Googles Android mark).
Permitting an entire business model premised on
the exploitation of famous marks to sell knock-off
products is flatly at odds with Congresss intent to pro-
tect famous marks from dilution. This is not merely
hypothetical: Trademark pirates frequently offer t-
shirts and other products explicitly referencing fa-
mous trademarks. The fair-use exception in the
TDRA was not intended to legalize the sale of unau-
thorized Star Wars or Boston Red Sox t-shirts simply
because the merchant adds a funny message while
marketing its free-riding products to fans.
Given the tremendous practical implications of
the Second Circuits decision, there is no reason to
wait for the purely legal question presented here to
percolate further. This Court should not leave other
trademark owners to suffer the irremediable harm of
trademark dilution as other lower courts struggle
38

with the important questions squarely presented in


this petition. See Moseley, 537 U.S. at 436 (Kennedy,
J., concurring) (A holder of a famous mark threat-
ened with diminishment of the marks capacity to
serve its purpose should not be forced to wait until the
damage is done and the distinctiveness of the mark
has been eroded.). In fact, Congress enacted the
TDRA and provided for injunctive relief to allo[w] fa-
mous mark owners to prevent dilution at its incipi-
ency and not force them to wait until the harm has
advanced so far that . . . the recognition of the
mark . . . is permanently impaired in order to sue.
Starbucks II, 736 F.3d at 206. If this Court defers re-
view of these issues until a later case, the trademark
owners that experience the dilution of their marks in
the interim will never be able to rehabilitate their per-
manently impaired intellectual-property rights.
CONCLUSION
The Second Circuits decision creates a direct con-
flict with the Fourth Circuit regarding the test for de-
termining parody in dilution cases and eviscerates vi-
tally important protections against the dilution of fa-
mous and distinctive marks. This Courts interven-
tion is urgently needed to restore uniformity to the
Nations trademark laws and to reinvigorate the es-
sential statutory protections against trademark dilu-
tion. The petition for a writ of certiorari should be
granted.
39

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

Counsel for Petitioner


July 13, 2017
APPENDIX
1a

APPENDIX A

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 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

PRESENT: GUIDO CALABRESI,


REENA RAGGI,
GERARD E. LYNCH,
Circuit Judges.

LOUIS VUITTON MALLETIER,


S.A.,

Plaintiff-Appellant,
v. No. 16-241-cv
MY OTHER BAG, INC.,
Defendant-Appellee.

APPEARING FOR ROBERT D. SHAPIRO,


APPELLANT: Barack Ferrazzano Kirsch-
baum & Nagelberg LLP, Chi-
cago, Illinois.

APPEARING FOR DAVID S. KORZENIK (Ter-


APPELLEE: ence P. Keegan, on the brief),
Miller Korzenik Sommers
Rayman LLP, New York, New
York; Brian J. Philpott, Corey
Donaldson, on the brief, Kop-
pel, Patrick, Heybl & Philpott,
Westlake Village, California.
Appeal from a judgment of the United States Dis-
trict 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.
3a

Plaintiff Louis Vuitton Malletier, S.A. (LV) ap-


peals from an award of summary judgment in favor of
My Other Bag, Inc. (MOB) on LVs claims under fed-
eral and state trademark and copyright law. See 15
U.S.C. 1114, 1125; 17 U.S.C. 501; N.Y. Gen. Bus.
Law 360l. We review an award of summary judg-
ment 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 opin-
ion. 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 dis-
counted favorable record evidence during its applica-
tion of the non-exclusive, eight-factor Polaroid balanc-
ing 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 con-
sumer confusion between LVs and MOBs products.
The argument fails because, whether we review the
district courts findings as to each Polaroid factor def-
erentially, see Playtex Prods., Inc. v. Ga.-Pac. Corp.,
390 F.3d 158, 162 (2d Cir. 2004), or de novo, see gen-
erally KellyBrown 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 dif-
ferences in MOBs mimicking of LVs mark, the lack
of market proximity between the products at issue,
4a

and minimal, unconvincing evidence of consumer con-


fusion compel a judgment in favor of MOB on LVs
trademark infringement claim. Accordingly, we af-
firm 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 MOBs
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 anal-
ysis stated in 1125(c)(2)(B), see generally Starbucks
Corp. v. Wolfes 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 simultaneousand
contradictorymessages: 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, Inc.
v. Bantam Doubleday Dell Publg Grp., Inc., 886 F.2d
490, 495 (2d Cir. 1989)). MOBs bags do precisely that.
At the same time that they mimic LVs designs and
handbags in a way that is recognizable, they do so as
a drawing on a product that is such a conscious depar-
ture from LVs image of luxuryin combination with
the slogan My other bagas to convey that MOBs
tote bags are not LV handbags. The fact that the joke
on LVs luxury image is gentle, and possibly even com-
plimentary to LV, does not preclude it from being a
parody. See Louis Vuitton Malletier, S.A. v. My Other
Bag, Inc., 156 F. Supp. 3d at 43538; see also L.L.
Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 34
5a

(1st Cir. 1987) ([A] trademark parody reminds us


that we are free to laugh at the images and associa-
tions linked with the mark . . . [or provides] entertain-
ment conveyed by juxtaposing the irreverent repre-
sentation of the trademark with the idealized image
created by the marks owner.). Indeed, a parody of
LVs luxury image is the very point of MOBs plebian
product. That distinguishes this case from ones cited
by LV where a trademark was used merely to pro-
mote or sell goods and services, which is impermis-
sible. See Starbucks Corp. v. Wolfes Borough Coffee,
Inc., 588 F.3d at 115 (using Charbucks to identify
coffee blend as one competing at same level and qual-
ity as Starbucks); Harley Davidson, Inc. v. Grottanelli,
164 F.3d 806, 813 (2d Cir. 1999) (using Harley-Da-
vidson logo to advertise motorcycle repair shop).
LV nevertheless contends that MOB is not enti-
tled to a fair-use dilution defense because MOB uses
LVs marks as a designation of source. 15 U.S.C.
1125(c)(3)(A). The district court, however, deter-
mined that the testimony of MOBs CEO, upon which
LV principally relies to support this argument, unam-
biguously refers to the likelihood of consumer confu-
sion, not the designation of source. See Louis Vuitton
Malletier, S.A. v. My Other Bag, Inc., 156 F. Supp. 3d
at 43738 (citing J.A. 35051). Our review of the tran-
script does not suggest otherwise. In any event, the
nature of MOBs businessit sells quite ordinary tote
bags with drawings of various luxury-brand hand-
bags, not just LVs, printed thereonand the presence
of My other bag, an undisputed designation of
source, on one side of each bag, independently support
summary judgment for MOB on this designation-of-
source issue.
6a

Accordingly, we affirm the award of summary


judgment to MOB on LVs federal trademark-dilution
claim. We likewise affirm summary judgment to
MOB on LVs state-law dilution claim. While N.Y.
Gen. Bus. Law 360l does not provide an explicit
fair-use defense, the manifest parodic use here pre-
cludes the requisite finding that the marks are sub-
stantially similar. See Starbucks Corp. v. Wolfes Bor-
ough Coffee, Inc., 588 F.3d at 114 (internal quotation
marks omitted).
3. Copyright Infringement
MOBs parodic use of LVs designs produces a
new expression [and] message that constitutes
transformative use. Campbell v. AcuffRose Music,
Inc., 510 U.S. at 579 (alterations, citations, and inter-
nal quotation marks omitted); accord TCA Television
Corp. v. McCollum, 839 F.3d 168, 180 (2d Cir. 2016).
Like the district court, we conclude that the remain-
ing fair-use factors either weigh in MOBs favor or are
irrelevant, see Louis Vuitton Malletier, S.A. v. My
Other Bag, Inc., 156 F. Supp. 3d at 44445, and LVs
arguments to the contrary largely repeat or echo those
we have already rejected.
Accordingly, we affirm the award of summary
judgment to MOB on LVs copyright claim.
4. Conclusion
We have considered LVs remaining arguments
and conclude that they are without merit. Accord-
ingly, the judgment of the district court is AF-
FIRMED.

FOR THE COURT:


CATHERINE OHAGAN
WOLFE, Clerk of Court
7a

APPENDIX B

UNITED STATES DISTRICT COURT


SOUTHERN DISTRICT OF NEW YORK

LOUIS VUITTON
MALLETIER, S.A.,
Plaintiff,
14-CV-3419 (JMF)
-v-
OPINION AND ORDER
MY OTHER BAG,
INC.,
Defendant.

JESSE M. FURMAN, United States District Judge:


Defendant My Other Bag, Inc. (MOB) sells sim-
ple canvas tote bags with the text My Other Bag ...
on one side and drawings meant to evoke iconic hand-
bags by luxury designers, such as Louis Vuitton, Cha-
nel, and Fendi, on the other. MOBs totes indeed,
its very name are a play on the classic my other
car ... novelty bumper stickers, which can be seen on
inexpensive, beat up cars across the country inform-
ing passersby with tongue firmly in cheek that
the drivers other car is a Mercedes (or some other
luxury car brand). The my other car bumper stick-
ers are, of course, a joke a riff, if you will, on wealth,
luxury brands, and the social expectations of who
would be driving luxury and non-luxury cars. MOBs
totes are just as obviously a joke, and one does not
necessarily need to be familiar with the my other car
8a

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

dollars (see Def. My Other Bags Statement Undis-


puted Material Facts Pursuant Local Civil Rule 56.1
(Docket No. 53) (MOB SOF) 13), and the company
invests substantial sums in creating and maintaining
a sense of exclusivity and luxury, (see id. 14). As a
result, several of Louis Vuittons designs and trade-
marks are famous and well-recognized icons of wealth
and expensive taste. In particular, Louis Vuittons
Toile Monogram design a repeating pattern fea-
turing the interlocking, stylized letters L and V and
three stylized flower designs (Louis Vuitton SOF 3),
depictions of which appear in an appendix to this
Opinion (Op. App.) (see Op. App., Figs. A-B) has
become the defining signature of the Louis Vuitton
brand, (Louis Vuitton SOF 4). Louis Vuitton has
registered trademarks in the Toile Monogram (id. 6)
and in the component stylized flower designs, (id. 7).
Two other iconic Louis Vuitton designs, the Mono-
gram Multicolore and the Damier, have achieved com-
parable levels of recognition and are also registered as
trademarks. (See id. 9-21). By all accounts, and
as the discussion below will make clear, Louis Vuitton
aggressively enforces its trademark rights. (Id. 35).
MOB was founded by Tara Martin in 2011. (MOB
SOF 11). As noted, the name My Other Bag was
inspired by novelty bumper stickers, which can some-
times be seen on inexpensive cars claiming that the
drivers other car is an expensive, luxury car, such
as a Mercedes. (Decl. Tara Martin Supp. Def.s Mot.
Summ. J. (Docket No. 52) 3). MOB produces and
sells canvas tote bags bearing caricatures of iconic de-
signer handbags on one side and the text My Other
Bag ... on the other. Several of MOBs tote bags
one of which is depicted in the appendix to this Opin-
10a

ion (see Op. App., Figs. C-D) display images conced-


edly designed to evoke classic Louis Vuitton bags.
(See MOB SOF 21-22; Louis Vuitton SOF 55-
59, 79-80). As the appendix illustrates, the drawings
use simplified colors, graphic lines, and patterns that
resemble Louis Vuittons famous Toile Monogram,
Monogram Multicolore, and Damier designs, but re-
place the interlocking LV and Louis Vuitton with
an interlocking MOB or My Other Bag. (See also
id. 47, 49). MOB markets its bags as [e]co-
friendly, sustainable tote bags playfully parodying the
designer bags we love, but practical enough for every-
day life. (Decl. Sharon Calhoun Supp. Mot. Summ.
J. Louis Vuitton Malletier, S.A. (Docket No. 66) (Cal-
houn Decl.), Ex. 25 at LVMA7194). While Louis Vuit-
ton sells its handbags for hundreds, if not thousands,
of dollars apiece, MOBs totes sell at prices between
thirty and fifty-five dollars. (Louis Vuitton SOF 42).
Its website and other marketing play up the idea that
high-priced designer bags cannot be used to carry
around, say, dirty gym clothes or messy groceries,
while its casual canvas totes can. (Calhoun Decl., Ex.
25 at LVMA7190-LVMA7192 ([T]his luncheon wor-
thy designer bag doesnt fit in at the gym, BUT My
Other Bag . . . DOES ....); see also Louis Vuitton SOF
65).
THE SUMMARY JUDGMENT STANDARD
Summary judgment is appropriate where the ad-
missible evidence and the pleadings demonstrate no
genuine dispute as to any material fact and the mo-
vant is entitled to judgment as a matter of law. Fed.
R. Civ. P. 56(a); see also Johnson v. Killian, 680 F.3d
234, 236 (2d Cir. 2012) (per curiam). A dispute over
an issue of material fact qualifies as genuine if the
evidence is such that a reasonable jury could return a
11a

judgment for the nonmoving party. Anderson v. Lib-


erty Lobby, Inc., 477 U.S. 242, 248 (1986); accord Roe
v. City of Waterbury, 542 F.3d 31, 35 (2d Cir. 2008).
The moving party bears the initial burden of demon-
strating the absence of a genuine issue of material
fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 325
(1986). In moving for summary judgment against a
party who will bear the ultimate burden of proof at
trial, the movants burden will be satisfied if he can
point to an absence of evidence to support an essential
element of the nonmoving partys claim. Goenaga v.
March of Dimes Birth Defects Found., 51 F.3d 14, 18
(2d Cir. 1995) (citing Celotex, 477 U.S. at 322-23); ac-
cord PepsiCo, Inc. v. Coca-Cola Co., 315 F.3d 101, 105
(2d Cir. 2002) (per curiam).
In ruling on a motion for summary judgment, all
evidence must be viewed in the light most favorable
to the non-moving party, Overton v. N.Y. State Div.
of Military & Naval Affairs, 373 F.3d 83, 89 (2d Cir.
2004), and the court must resolve all ambiguities and
draw all permissible factual inferences in favor of the
party against whom summary judgment is sought,
Sec. Ins. Co. of Hartford v. Old Dominion Freight Line,
Inc., 391 F.3d 77, 83 (2d Cir. 2004). When, as in this
case, both sides move for summary judgment, the dis-
trict court is required to assess each motion on its
own merits and to view the evidence in the light most
favorable to the party opposing the motion, drawing
all reasonable inferences in favor of that party. Wa-
chovia Bank, Natl Assn v. VCG Special Opportunities
Master Fund, Ltd., 661 F.3d 164, 171 (2d Cir. 2011).
Thus, neither side is barred from asserting that there
are issues of fact, sufficient to prevent the entry of
judgment, as a matter of law, against it. Heublein,
12a

Inc. v. United States, 996 F.2d 1455, 1461 (2d Cir.


1993).
To defeat a motion for summary judgment, a non-
moving party must advance more than a scintilla of
evidence, Anderson, 477 U.S. at 252, and demon-
strate more than some metaphysical doubt as to the
material facts, Matsushita Elec. Indus. Co., Ltd. v.
Zenith Radio Corp., 475 U.S. 574, 586 (1986). The
non-moving party cannot defeat the motion by rely-
ing on the allegations in [its] pleading or on conclusory
statements, or on mere assertions that affidavits sup-
porting the motion are not credible. Gottlieb v. Cty. of
Orange, 84 F.3d 511, 518 (2d Cir. 1996) (citation omit-
ted). Affidavits submitted in support of, or opposition
to, summary judgment must be based on personal
knowledge, must set forth such facts as would be ad-
missible in evidence, and must show that the affiant
is competent to testify to the matters stated therein.
Patterson v. Cty. of Oneida, 375 F.3d 206, 219 (2d Cir.
2004) (quoting Fed. R. Civ. P. 56(e)).
DISCUSSION
As noted, Louis Vuitton asserts three categories of
claims against MOB. First, Louis Vuitton brings
trademark dilution claims under both New York and
federal law. (Compl. (Docket No. 2) 73-80, 87-92).
Second, Louis Vuitton alleges that MOBs totes in-
fringe its trademarks under federal law. (Id. 58-
72). And third, Louis Vuitton contends that MOBs
totes violate federal copyright law. (Id. 81-86). The
Court will address each in turn.
A. Trademark Dilution
Louis Vuittons principal claim is that MOB is li-
able for trademark dilution under the Lanham Act, 15
U.S.C. 1125(c), and New York General Business Law
13a

360-l. The concept of trademark dilution has been


described as a subtle one, Tiffany (NJ) Inc. v. eBay,
Inc., 576 F. Supp. 2d 463, 521-22 (S.D.N.Y. 2008), affd
in part, reversed in part on other grounds, and calls for
some explanation. When an individual encounters a
mark (e.g., a word or symbol) in a store or watching a
commercial, he or she can develop an association be-
tween a product or service and its corresponding qual-
ity, brand reputation, or origin. 1A Lindey on Enter-
tainment, Publishing and the Arts 2:52.50 (3d ed.,
updated Jan. 2016). Anti-dilution laws protect those
acquired associations from being diluted by other uses
of a plaintiffs trademark. In particular, dilution by
blurring the claim that Louis Vuitton pursues here
refers to the gradual diminishment of a famous
marks acquired ability ... to clearly and unmistaka-
bly distinguish one source through unauthorized use.
Hormel Foods Corp. v. Jim Henson Prods., Inc., 73
F.3d 497, 506 (2d Cir. 1996) (alteration in original) (in-
ternal quotation marks omitted); see also Allied
Maint. Corp. v. Allied Mech. Trades, Inc., 42 N.Y.2d
538, 544 (1977) (observing that New York law protects
against the gradual whittling away of a firms dis-
tinctive trade-mark or name). 1 In other words, dilu-
tion occurs when the unauthorized use of a famous
mark reduces the publics perception that the mark
signifies something unique, singular, or particular.

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

H.R. Rep. No. 109-3, at 4 (2005), as reprinted in 2006


U.S.C.C.A.N. 1091, 1092.
The classic case of dilution by blurring involves an
unrelated product coopting a famous name or trade-
mark as its own hypothetical anomalies such as
Dupont shoes, Buick aspirin tablets, Schlitz varnish,
Kodak pianos, Bulova gowns, and so forth. Starbucks
Corp. v. Wolfes Borough Coffee, Inc., 588 F.3d 97, 106
(2d Cir. 2009) (Starbucks Corp. I) (internal quota-
tion marks omitted); see also Visa Intl Serv. Assn v.
JSL Corp., 610 F.3d 1088, 1090 (9th Cir. 2010) (giving
Tylenol snowboards, Netscape sex shops and Harry
Potter dry cleaners as examples of dilution by blur-
ring (internal quotation marks omitted)). In each of
those cases, the new use of the famous trademark may
cause consumers [to] form new and different associa-
tions with the plaintiffs mark, thereby diluting the
value of that mark. Visa Intern., 610 F.3d at 1090.
For example, the owner of a trademark for a famous
handbag could sue another company that begins using
the trademark to refer to laundry detergent. H.R.
Rep. No. 112-647, at 5 (2012), as reprinted in 2012
U.S.C.C.A.N. 559, 562; see also Hormel, 73 F.3d at 506
(The legislative history of 368d ... giv[es] examples
of hypothetical violations: DuPont shoes, Buick aspi-
rin tablets, Schlitz varnish, Kodak pianos, Bulova
gowns, and so forth. (quoting 1954 N.Y. Legis. Ann.
49-50)). In that example, the laundry detergents use
of the handbags trademark would diminish the trade-
marks ability to clearly and unmistakably identify
the handbag. Over time, consumers might come to
identify the trademark interchangeably with both the
detergent and the handbag, whittling away the dis-
tinctiveness and value of the handbag makers mark.
15a

See Visa Intl, 610 F.3d at 1090 ([D]ilution by blur-


ring ... occurs when a mark previously associated with
one product also becomes associated with a second.).
To succeed on a dilution claim under federal law,
a plaintiff must prove (1) that the trademark is truly
distinctive or has acquired secondary meaning, and
(2) a likelihood of dilution . . . as a result of blurring.
Ergowerx Intl, LLC v. Maxell Corp. of Am., 18 F.
Supp. 3d 430, 51 (S.D.N.Y. 2014) (quoting Strange
Music, Inc. v. Strange Music, Inc., 326 F. Supp. 2d
481, 496 (S.D.N.Y. 2004)). A plaintiff need not show
economic injury. See 15 U.S.C. 1125(c) (providing
for liability regardless of the presence or absence . . .
of actual economic injury). New York law is similar,
but does not require proof that the plaintiffs mark is
famous. See Hormel, 73 F.3d at 505-06. In assessing
whether dilution by blurring is likely to occur under
federal law, a court may consider all relevant fac-
tors, including the following six statutorily enumer-
ated factors: (1) the degree of similarity between the
challenged mark and the famous mark; (2) the degree
of distinctiveness of the famous mark; (3) the extent
to which the owner of the famous mark is engaging in
exclusive use of the mark; (4) the degree of recognition
of the famous mark; (5) whether the user of the mark
or trade name intended to create an association with
the famous mark; and (6) any actual association be-
tween the mark or trade name and the famous mark.
15 U.S.C. 1125(c)(2)(B). The analysis, however,
must ultimately focus on whether an association,
arising from the similarity between the subject
marks, impairs the distinctiveness of the famous
mark that is, the ability of the famous mark to
serve as a unique identifier. Starbucks Corp. v.
Wolfes Borough Coffee, Inc., 736 F.3d 198, 204 (2d Cir.
16a

2013) (Starbucks Corp. II) (internal quotation marks


omitted); see also N.Y. Stock Exch. v. N.Y., N.Y. Hotel
LLC, 293 F.3d 550, 558 (2d Cir. 2002). Under New
York law, courts look to a similar set of factors: (i)
the similarity of the marks; (ii) the similarity of the
products covered; (iii) the sophistication of the con-
sumers; (iv) the existence of predatory intent; (v) the
renown of the senior mark; and (vi) the renown of the
junior mark. N.Y. Stock Exch., 293 F.3d at 558. But
again, those factors are only guideposts: The ultimate
question under New York law is whether there is a
likelihood that the capacity of the senior owners mark
to serve as a unique identifier f its source will be di-
minished. Louis Vuitton Malletier v. Dooney &
Bourke, Inc., 561 F. Supp. 2d 368, 393 (S.D.N.Y.
2008). 2
Significantly, federal law provides that certain
uses of a mark shall not be actionable as dilution by
blurring, including:
Any fair use ... of a famous mark by another
person other than as a designation of source for
the persons own goods or services, including
use in connection with ... identifying and paro-

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

dying, criticizing, or commenting upon the fa-


mous mark owner or the goods or services of the
famous mark owner.
15 U.S.C. 1125(c)(3). 3 The statute does not define
parody, but courts have explained that a parody is
a simple form of entertainment conveyed by juxta-
posing the irreverent representation of the trademark
with the idealized image created by the marks
owner. Louis Vuitton Malletier S.A. v. Haute Diggity
Dog, LLC, 507 F.3d 252, 260 (4th Cir. 2007) (Haute
Diggity Dog). A parody must convey two simultane-
ous and contradictory messages: that it is the
original, but also that it is not the original and is in-
stead a parody. Cliffs Notes, Inc. v. Bantam Double-
day Dell Publg Grp., Inc., 886 F.2d 490, 494 (2d Cir.
1989). The latter message must not only differenti-
ate the alleged parody from the original but must also
communicate some articulable element of satire, ridi-
cule, joking, or amusement. Haute Diggity Dog, 507
F.3d at 260; see Cliffs Notes, 886 F.2d at 496 (stating
that a work is a parody if, taken s a whole, it pokes
fun at its subject); Jordache Enters., Inc. v. Hogg
Wyld, Ltd., 828 F.2d 1482, 1486 (10th Cir. 1987) (A
parody relies upon a difference from the original
mark, presumably a humorous difference, in order to
produce its desired effect.).

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

Louis Vuitton protests that, even if MOBs totes


are a parody of something, they are not a parody of its
handbags and, relatedly, that MOBs argument is a
post hoc fabrication for purposes of this litigation.
(Louis Vuittons Mem. 17-20, 23). The company notes
that MOBs Chief Executive Officer, Tara Martin, has
referred to its bags as iconic and stated that she
never intended to disparage Louis Vuitton. (Id. at 18-
19; see also Calhoun Decl., Ex. 25, at LVMA0001390
(MOB website describing its bags as an ode to hand-
bags women love). Thus, Louis Vuitton argues, the
My Other Bag . . . joke mocks only MOB itself or, to
the extent it has a broader target, any humor is
merely part of a larger social commentary, not a par-
ody directed towards Louis Vuitton or its products.
(Id. at 19). In support of those arguments, Louis Vuit-
ton relies heavily on its victory in an unpublished
2012 opinion from this District: Louis Vuitton
Malletier, S.A. v. Hyundai Motor Am., No. 10-CV-1611
(PKC), 2012 WL 1022247 (S.D.N.Y. Mar. 22, 2012). In
that case, Hyundai aired a thirty-second commercial
titled Luxury, which included a four-second scene
of an inner-city basketball game played on a lavish
marble court with a gold hoop. Id. at *1. The scene
also included a basketball bearing marks meant to
evoke the Louis Vuitton Toile Monogram. See id. The
Court rejected Hyundais parody defense based in
large part on deposition testimony from Hyundai rep-
resentatives that conclusively established that the car
company had no intention for the commercial to make
any statement about Louis Vuitton at all. See id. at
*17-19 (excerpting deposition testimony establishing
that Hyundai did not mean to criticize or make fun
of Louis Vuitton, or even compare the Hyundai with
[Louis Vuitton]). On the basis of that testimony, the
Court concluded that Hyundai had disclaimed any
20a

intention to parody, criticize or comment upon Louis


Vuitton and that the ad was only intended to make a
broader social comment about what it means for a
product to be luxurious. Id. at *17 (internal quotation
marks omitted).
The Hyundai decision is not without its critics,
see, e.g., 4 McCarthy 24:120, but, in any event, this
case is easily distinguished on its facts. Here, unlike
in Hyundai, it is self-evident that MOB did mean to
say something about Louis Vuitton specifically. That
is, Louis Vuittons handbags are an integral part of
the joke that gives MOB its name and features prom-
inently on every tote bag that MOB sells. In arguing
otherwise, Louis Vuitton takes too narrow a view of
what can qualify as a parody. The quip My Other
Bag . . . is a Louis Vuitton, printed on a workhorse
canvas bag, derives its humor from a constellation of
features including the features of the canvas bag
itself, societys larger obsession with status symbols,
and the meticulously promoted image of expensive
taste (or showy status) that Louis Vuitton handbags
have, to many, come to symbolize. The fact that
MOBs totes convey a message about more than just
Louis Vuitton bags is not fatal to a successful parody
defense. See Campbell v. Acuff- Rose Music, Inc., 510
U.S. 569, 580 (1994) (holding that a copyright parodist
must show that his parody, at least in part, comments
on [the parodied] authors work (emphasis added));
Harley- Davidson, Inc. v. Grottanelli, 164 F.3d 806,
813 (2d Cir. 1999) (applying that standard to trade-
mark parody). And the fact that Louis Vuitton at least
does not find the comparison funny is immaterial;
Louis Vuittons sense of humor (or lack thereof) does
not delineate the parameters of its rights (or MOBs
rights) under trademark law. See, e.g., Cliffs Notes,
21a

886 F.2d at 495-96 ([T]he district court apparently


thought that the parody here had to make an obvious
joke out of the cover of the original in order to be re-
garded as a parody. We do not see why this is so. It
is true that some of the covers of the parodies brought
to our attention, unlike that of [the defendant], con-
tain obvious visual gags. But parody may be sophisti-
cated as well as slapstick; a literary work is a parody
if, taken as a whole, it pokes fun at its subject. (foot-
note omitted)); cf. Yankee Publg Inc. v. News Am.
Publg Inc., 809 F. Supp. 267, 280 (S.D.N.Y. 1992)
(Although [the defendants] position would probably
be stronger if its joke had been clearer, the obscurity
of its joke does not deprive it of First Amendment sup-
port. First Amendment protections do not apply only
to those who speak clearly, whose jokes are funny, and
whose parodies succeed.). 4
In those regards, another decision from this Dis-
trict, Tommy Hilfiger Licensing, Inc. v. Nature Labs,
LLC, 221 F. Supp. 2d 410, 415 (S.D.N.Y. 2002), is
more on point. That case involved a line of parody
perfume products for use on pets. In particular, the
defendant had created a pet perfume called Tommy
Holedigger, which resembled a Tommy Hilfiger fra-
grance in name, scent, and packaging. See id. at 412-

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

413. Hilfiger, like Louis Vuitton here, argued (albeit


in connection with a claim of trademark infringement
rather than dilution) that the defendant was not enti-
tled to protection as a parody because its product ad-
mittedly makes no comment about Hilfiger. Id. at
415. In support of that argument, Hilfiger cited testi-
mony from the defendants general partner that his
product was not intended to make any comment about
Hilfiger or its products. See id. Noting that the gen-
eral partner had also testified that he was intending
to create a parody . . . target[ing] . . . Tommy Hilfiger,
a fun play on words, or spoof . . . [t]o create enjoy-
ment, a lighter side, Judge Mukasey rejected Hil-
figers argument as follows:
Although [the general partner] had difficulty
expressing the parodic content of his communi-
cative message, courts have explained that:

Trademark parodies . . . do convey a mes-


sage. The message may be simply that busi-
ness and product images need not always be
taken too seriously; a trademark parody re-
minds us that we are free to laugh at the im-
ages 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
marks owner.
Id. (quoting L.L. Bean, Inc. v. Drake Publishers, Inc.,
811 F.2d 26, 34 (1st Cir. 1987)). He added, in a com-
ment that applies equally well here: One can readily
see why high-end fashion brands would be ripe targets
for such mockery. Id.
23a

Alternatively, relying principally on Dallas Cow-


boys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604
F.2d 200 (2d Cir. 1979), Louis Vuitton argues that
MOBs totes cannot be a parody because they do not
need to use Louis Vuittons trademarks for the parody
to make sense. (Louis Vuittons Mem. 21-22). Strictly
speaking, that is true to the extent that MOB could
use any well-known luxury handbag brand to make its
points. But, whereas the defendant in Dallas Cow-
boys Cheerleaders, a purveyor of a gross and revolting
sex film, 604 F.2d at 202, did not have to use anyone
elses trademark let alone the plaintiffs specific
trademark to make its point (allegedly, com-
ment[ing] on sexuality in athletics, id. at 206), the
same cannot be said here. MOBs tote bags would not
make their point, and certainly would not be funny, if
the obverse of the tote merely depicted some generic
handbag. Such a tote would confusingly communicate
only that my other bag . . . is some other bag. In other
words, Louis Vuittons argument distorts any neces-
sity requirement beyond recognition, and myopically
suggests that, where a parody must evoke at least one
of a finite set of marks in order to make its point, it
can evoke none of them because reference to any par-
ticular mark in the set is not absolutely necessary.
The Court declines to create such an illogical rule.
Finally, Louis Vuitton contends that the fair use
exception does not apply to MOBs totes because MOB
uses Louis Vuittons trademarks as a designation of
source for [MOBs] own goods. (Louis Vuittons Mem.
17-18). After all, Section 1125(c)(3), by its terms, pro-
tects [a]ny fair use . . . of a famous mark by another
person other than as a designation of source for the
persons own goods or services. 15 U.S.C. 1125(c)(3)
(emphasis added); see also Haute Diggity Dog, 507
24a

F.3d at 266 (Under the statutes plain language, par-


odying a famous mark is protected by the fair use de-
fense only if the parody is not a designation of source
for the persons own goods or services.). But given
the overall design of MOBs tote bags (the identical,
stylized text My Other Bag . . . on one side and dif-
fering caricatures on the other side), and the fact that
the bags evoke a range of luxury brands with different
graphics, there is no basis to conclude that MOB uses
Louis Vuittons marks as a designation of source for
its tote bags. Indeed, as noted, that is the whole point
of MOBs joke: My other bag that is, not this bag
is a Louis Vuitton handbag. That joke not to
mention the cartoon-like rendering of the bags
builds significant distance between the pattern incor-
porated into the bag sketches and the designated
source of the totes themselves. Thus, MOB is not pre-
cluded from invoking the fair use provision.
Louis Vuittons argument to the contrary rests on
a single, mischaracterized citation to the record.
(Louis Vuittons Mem. 18). At her deposition, MOB
CEO Martin was asked:
Would you agree with me that these pictures
that people see on [your totes] with whatever
markings they have are things that you use to
designate where the goods come from? They
designate your company? . . . [W]ould you agree
with me that the depictions of Louis Vuitton
bags that you use on those totes that have de-
pictions of Louis Vuitton bags are depictions . .
. you use in order for people to understand that
the product comes from you, My Other Bag?
(Calhoun Decl., Ex. 3 (Martin Dep. Tr.) 88:23-89:1).
Martin responded that, yes, [p]eople know that the
product . . . our tote bags with those depictions come
25a

from My Other Bag. (Id.). That answer is not, as


Louis Vuitton would have it, an admission that MOB
used its marks to identify the source of MOBs tote
bags. Given the context namely, counsels attempt
to establish that consumers were likely to be confused
about the origins of MOBs totes (see id. at 88-90, 99-
101) it is plain that Martins sole point was that she
did not believe that consumers were confused about
who produces MOBs tote bags. Louis Vuitton does
not point to any other evidence that would demon-
strate that MOB uses Louis Vuittons marks as desig-
nations of source for its own products or brand. (See
Mem. Pl. Louis Vuitton Malletier, S.A. Resp. Mot.
Summ. J. My Other Bag, Inc. (Docket No. 86) (Louis
Vuittons Oppn) 4-5).
2. Dilution by Blurring
In short, MOBs use of Louis Vuittons marks
qualifies as fair use as a matter of law under Section
1125(c)(3). But even if it did not if, for example,
MOB did use Louis Vuittons marks as a designation
of source MOB would still be entitled to summary
judgment on Louis Vuittons dilution claims because
the tote bags pose no danger of impairing the distinc-
tiveness of Louis Vuittons marks. As noted above, to
succeed on its dilution claims under both federal
and New York law Louis Vuitton must show that
MOBs bags are likely to blur Louis Vuittons marks
ability . . . to clearly and unmistakably distinguish
one source as a unique identifier. Hormel Foods, 73
F.3d at 506 (internal quotation marks omitted). 5 Sig-
nificantly, it is not enough to show as Louis Vuitton
5
Under federal (but not New York) law, Louis Vuitton also has
to show that the trademark is truly distinctive or has acquired
secondary meaning. Ergowerx, 18 F. Supp. 3d at 451 (quoting
26a

indisputably can that members of the public are


likely to associate the defendants mark with the
plaintiffs mark (or that the defendant promotes such
association). Under the statute,
association is a necessary condition of, but not
equivalent to, dilution by blurring . . . . Even if
there is proof of a likely association, that does
not mean that there is also a likelihood of dilu-
tion by blurring. . . . The statute explicitly re-
quires proof of the likelihood that this defend-
ants use impairs the distinctiveness of the fa-
mous mark.
4 McCarthy 24:116; see also Moseley, 537 U.S. at
433. Thus, the operative question is whether the kind
of association MOB creates here is likely to impair the
distinctiveness of Louis Vuittons marks.
With respect to that question, the Fourth Circuits
decision in Haute Diggity Dog ironically, also in-
volving Louis Vuitton is highly instructive. In
Haute Diggity Dog, Louis Vuitton brought a trade-
mark dilution claim against the manufacturer of pet
toys with names that humorously evoked various
high-end brands, including a chew toy for dogs a
small, plush purse decorated with a Toile Monogram-
esque pattern called Chewy Vuiton. 507 F.3d at
258. The Court held that the fair use exception for
parodies in Section 1125(c)(3) did not apply because
the defendant used Louis Vuittons mark as a desig-
nation of source for its own goods. See id. at 266. Nev-
ertheless, the Court continued, federal law does not

Strange Music, Inc. v. Strange Music, Inc., 326 F.Supp.2d 481,


496 (S.D.N.Y. 2004)). Here, there is and can be no dispute
that Louis Vuittons trademarks are famous and distinctive. (See
MOBs Mem. 1-2, 5).
27a

require a court to ignore the existence of a parody that


is used as a trademark, and it does not preclude a
court from considering parody as part of the circum-
stances to be considered for determining whether the
plaintiff has made out a claim for dilution by blur-
ring. Id. at 266-67. To the contrary, the statute calls
for consideration of all relevant factors, including
the six factors supplied in 1125(c)(2)(B), with re-
spect to several of which the use of a mark as parody
is specifically relevant. Id. at 267. The Fourth Cir-
cuit explained:
For example, factor (v) (whether the defendant
intended to create an association with the fa-
mous mark) and factor (vi) (whether there ex-
ists an actual association between the defend-
ants mark and the famous mark) directly in-
vite inquiries into the defendants intent in us-
ing the parody, the defendants actual use of the
parody, and the effect that its use has on the
famous mark. While a parody intentionally cre-
ates an association with the famous mark in or-
der to be a parody, it also intentionally com-
municates, if it is successful, that it is not the
famous mark, but rather a satire of the famous
mark. That the defendant is using its mark as
a parody is therefore relevant in the considera-
tion of these statutory factors.
Similarly, factors (i), (ii), and (iv) the degree
of similarity between the two marks, the degree
of distinctiveness of the famous mark, and its
recognizability are directly implicated by
consideration of the fact that the defendants
mark is a successful parody. Indeed, by making
the famous mark an object of the parody, a suc-
28a

cessful parody might actually enhance the fa-


mous marks distinctiveness by making it an
icon. The brunt of the joke becomes yet more
famous.
Id. (citation omitted). The Fourth Circuit concluded
that the owner of a famous mark such as Louis Vuit-
ton therefore had an increased burden to demon-
strate that the distinctiveness of its famous marks is
likely to be impaired by a successful parody. Id. Louis
Vuitton failed to carry that burden. Haute Diggity
Dog, the Court reasoned, mimicked Louis Vuittons
famous marks, but did not come so close to them as
to destroy the success of its parody and, more im-
portantly, to diminish the [Louis Vuitton] marks ca-
pacity to identify a single source. Id. at 268. That is,
although Haute Diggity Dog intentionally associated
its marks, it did so only partially and certainly im-
perfectly, so as to convey the simultaneous message
that it was not in fact a source of [Louis Vuitton] prod-
ucts. Rather, as a parody, it separated itself from the
[Louis Vuitton] marks in order to make fun of them.
Id. at 268.
The Court agrees with the Fourth Circuits analy-
sis in Haute Diggity Dog, and reaches the same con-
clusion in this case for substantially the same reasons.
See also Starbucks Corp. I, 588 F.3d at 112-13 (quot-
ing at length from Haute Diggity Dog, but ultimately
withholding judgment on whether to adopt the Fourth
Circuits parody holding). Here, as in Haute Diggity
Dog, when considering factors (ii), (iii), and (iv), it is
readily apparent . . . that [Louis Vuittons] marks are
distinctive, famous, and strong. 507 F.3d at 267. But
as in Haute Diggity Dog, that fame and recognition
only make it less likely that MOBs use would impair
the distinctiveness of Louis Vuittons marks. See id.
29a

Nor is there any serious question that the drawings


on MOBs totes are similar to Louis Vuittons bags
(factor (i)) in a way that was intended to create an as-
sociation with Louis Vuittons bags (factors (v) and
(vi)). But while MOB deliberately uses, or at least
evokes, Louis Vuittons trademarks, it does so in a
way quite different from the hypothetical seller of
Buick aspirin tablets. See Starbucks Corp. I, 588
F.3d at 105. Instead, MOB intentionally associated
its marks, but only partially and certainly imper-
fectly, so as to convey the simultaneous message that
it was not in fact a source of [Louis Vuitton] products.
Haute Diggity Dog, 507 F.3d at 268. In fact, if any-
thing, MOB distances itself from Louis Vuitton even
more than Haute Diggity Dog did, as the very point of
the my other bag gimmick is that the MOB tote is
not a Louis Vuitton handbag. Thus, when consider-
ing the relevant factors to determine whether blurring
is likely to occur in this case, the Court readily
come[s] to the conclusion, as the Fourth Circuit did
in its case, that [Louis Vuitton] has failed to make
out a case of trademark dilution by blurring by failing
to establish that the distinctiveness of its marks was
likely to be impaired by MOBs marketing and sale of
its products. Id.
B. Trademark Infringement
Next, the Court turns to Louis Vuittons trade-
mark infringement claims. 6 The crucial issue in an

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

action for trademark infringement is whether there is


any likelihood that an appreciable number of ordinar-
ily prudent purchasers are likely to be misled, or in-
deed simply confused, as to the source of the goods in
question. Savin Corp. v. Savin Grp., 391 F.3d 439,
456 (2d Cir. 2004) (internal quotation marks and al-
terations omitted). To determine whether there is a
likelihood of confusion, courts in this Circuit apply the
eight-factor balancing test first articulated by Judge
Friendly in Polaroid Corp. v. Polarad Elecs. Corp., 287
F.2d 492 (2d Cir. 1961). The eight factors are: (1)
strength of the trademark; (2) similarity of the marks;
(3) proximity of the products and their competitive-
ness with one another; (4) evidence that the senior
user may bridge the gap by developing a product for
sale in the market of the alleged infringers product;
(5) evidence of actual consumer confusion; (6) evidence
that the imitative mark was adopted in bad faith; (7)
respective quality of the products; and (8) sophistica-
tion of consumers in the relevant market. See Star
Indus., Inc. v. Bacardi & Co. Ltd., 412 F.3d 373, 384
(2d Cir. 2005). But much like application of the stat-
utory factors used to evaluate trademark dilution
claims, application of the Polaroid test is not me-
chanical, but rather, focuses on the ultimate question
of whether, looking at the products in their totality,
consumers are likely to be confused. Id. Further-
more, as the Second Circuit has recognized, normal
application of the Polaroid test, which developed in
the context of purely commercial exploitation, is at
best awkward in the context of parody, which must
evoke the original and constitutes artistic expression.
Cliff Notes, 886 F.2d at 495 n.3.

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

Applying the Polaroid factors here, the Court con-


cludes that Louis Vuittons infringement claims fail
for much the same reasons that its dilution claims
failed. See Tommy Hilfiger, 221 F. Supp. 2d at 422
(noting that many of the factors relevant to the like-
lihood of dilution are also relevant to the likelihood
of confusion). Beginning with the first factor the
strength of Louis Vuittons trademark it is undis-
puted (indeed, indisputable) that Louis Vuittons
marks are famous. (See Louis Vuitton SOF 1-2).
In the usual trademark case, a strong mark is a fac-
tor pointing toward a likelihood of confusion. How-
ever, where the plaintiffs mark is being used as part
of a jest . . . the opposite can be true. The strength
and recognizability of the mark may make it easier for
the audience to realize that the use is a parody and a
joke on the qualities embodied in trademarked word
or image. Tommy Hilfiger, 221 F. Supp. 2d at 416 (in-
ternal quotation marks, brackets, and citations omit-
ted); see also Haute Diggity Dog, 507 F.3d at 261 (It
is a matter of common sense that the strength of a fa-
mous mark allows consumers immediately to perceive
the target of the parody, while simultaneously allow-
ing them to recognize the changes to the mark that
make the parody funny or biting). Such is the case
here: Louis Vuittons marks are so well known that
consumers are likely both immediately to recognize
the target of the joke and to appreciate the obvious
changes to the marks that constitute the joke.
Tommy Hilfiger, 221 F. Supp. 2d at 416. In that way,
the distinctiveness of Louis Vuittons mark favors
MOB or, at most, is neutral.
As for the similarity of the marks, an inquiry into
the degree of similarity between two marks does not
32a

end with a comparison of the marks themselves. Hor-


mel Foods, 73 F.3d at 503 (internal quotation marks
omitted). Instead, [o]ne must also look to context, be-
cause the setting in which a designation is used af-
fects its appearance and colors the impression con-
veyed by it. Tommy Hilfiger, 221 F. Supp. 2d at 417
(quoting Hormel Foods, 73 F.3d at 503). Viewed in
that way, the second Polaroid factor also favors MOB.
There are, to be sure, similarities intended similar-
ities between the bag-within-a-bag depicted on
MOBs tote bags and Louis Vuittons marks. (Com-
pare Op. App., Fig. B with Op. App., Figs. C-D). At
the same time, there are obvious differences: MOBs
depiction is cartoonish; MOB is substituted for the
well-known interlocking LV; and the drawing ap-
pears on only one side of a workhouse canvas bag,
with the name of the company (My Other Bag . . .)
printed in large letters on the other side followed by
an ellipsis, inviting the observer to complete the joke.
Those differences, together with the context and
overall setting . . . convey to the ordinary viewer that
this is a joke, not the real thing, meaning that con-
fusion as to source, sponsorship, affiliation, or connec-
tion is unlikely. 6 McCarthy 31:155.
The next two Polaroid factors proximity of the
products and likelihood that plaintiff will bridge the
gap also support MOB. Louis Vuitton argues that
its handbags are directly competitive with MOBs
totes and attract similar consumers. (Louis Vuit-
tons Oppn 23). In particular, Louis Vuitton argues
that, just like MOB, many of Louis Vuittons bags are
casual and made of canvas. (See Louis Vuitton SOF
27- 29). But that claim does not withstand even
light scrutiny. As Louis Vuitton repeatedly empha-
sizes, the company is a premier luxury fashion house
33a

that sells high quality handbags, luggage, apparel,


and many other fashion and luxury goods. (Louise
Vuittons Mem. 2). Its handbags cost hundreds, if not
thousands of dollars, and are sold exclusively in
Louis-Vuitton owned stores and on the e-commerce
website, www.louisvuitton.com. (Louis Vuitton SOF
34; MOB SOF 13). By contrast, MOBs totes are
sold on its website, www.myotherbag.com, and retail
for only between thirty and fifty-five dollars. (See,
e.g., Calhoun Decl., Ex. 25, at LVMA0001303,
LVMA0001470; Louis Vuitton SOF 42). In short,
MOBs bags are in no meaningful sense competitive
with Louis Vuittons designer handbags. See, e.g.,
Tommy Hilfiger, 221 F. Supp. 2d at 418 (finding that
the third Polaroid factor favored the defendant be-
cause the plaintiffs and defendants products, alt-
hough similar in some respects, were sold in different
kinds of stores the former in department or de-
signer stores, the latter in pet stores or gift shops
at markedly different prices); accord Haute Diggity
Dog, 507 F.3d at 263. Nor has Louis Vuitton put for-
ward any evidence suggesting that it plans to bridge
the gap by selling casual parody totes at low price
points.
The fifth factor, evidence of actual consumer con-
fusion, also weighs in MOBs favor. In support of its
argument to the contrary, Louis Vuitton points to a
handful of instances in which people have described
certain MOB totes as LV bags. (See Louis Vuitton
SOF 81-85). Even if those descriptions were taken
literally, a handful of instances is hardly strong evi-
dence of actual consumer confusion. Moreover, there
is reason not to take them literally: On their face, the
comments are plainly using LV as a shorthand to
34a

describe the MOB tote designs that evoke Louis Vuit-


ton bags. That is, the anecdotes do little more than
indicate that consumers get the joke on MOBs totes;
they do not suggest that any consumers actually be-
lieved MOBs totes were produced or sponsored by
Louis Vuitton. Given that MOBs totes have been on
the market for several years, the fact that Louis Vuit-
ton cannot produce any actual evidence of consumer
confusion suggests that MOBs use of Louis Vuittons
marks does not cause a meaningful likelihood of con-
fusion. Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208,
228 (2d Cir. 1999), abrogated on other grounds by
Moseley, 537 U.S. 418; see also Cohn v. Petsmart, Inc.,
281 F.3d 837, 842-43 (9th Cir. 2002) (per curiam)
([S]ome evidence of actual confusion should have be-
come available if [the defendants] coexisting use had
created a genuine likelihood of confusion.); Tommy
Hilfiger, 221 F. Supp. 2d at 419 (Where, as here, a
product has been on the market for several years, the
absence of evidence on this point is considered a very
significant deficiency. (internal quotation marks
omitted)).
Contrary to Louis Vuittons contention (Louis
Vuitton Oppn 24), the sixth factor the defendants
bad faith does not count in its favor either. Louis
Vuitton relies on the fact that MOB intentionally de-
signed its totes to evoke Louis Vuittons bags, as to
which there is and can be no dispute. (Id.) In the
context of parody, however, [t]hat evidence . . . does
not show that defendant acted with the intent rele-
vant in trademark cases that is, an intent to capi-
talize on consumer deception or hitch a free ride on
plaintiffs good will. Tommy Hilfiger, 221 F. Supp. 2d
at 419. Instead, in that context, the intent is not nec-
essarily to confuse the public but rather to amuse.
35a

Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d


1482, 1486 (10th Cir. 1987). That is, [t]he benefit to
the one making the parody . . . arises from the humor-
ous association, not from public confusion as to the
source of the marks. Id.; see also, e.g., Tommy Hil-
figer, 221 F. Supp. 2d at 419 (The commercial success
of a parodists product is attributable to consumers
who purchased because they were amused by the
cleverness of its design, and not because they believed
it to be the original. (quoting Anheuser-Busch, Inc. v.
L. & L. Wings, Inc., 962 F.2d 316, 322 (4th Cir. 1992)).
Thus, MOBs intent to imitate and suggest, but not
use, the marks of a high-fashion LOUIS VUITTON
handbag is not the sort of bad faith that cuts in fa-
vor of a finding of infringement under the Polaroid
test. Haute Diggity Dog, 507 F.3d at 268; cf. Jordache
Enters., 828 F.2d at 1487 (Our single concern here . .
. is whether an intent to parody an existing trademark
supports an inference of a likelihood of confusion un-
der the reasoning that one who chooses a mark similar
to an existing mark intends to confuse the public. We
hold that it does not. (citation omitted)).
Finally, the seventh and eighth Polaroid factors
are either neutral or cut against Louis Vuitton. Louis
Vuitton has not demonstrated that the lower quality
of MOBs totes threatens to tarnish its trademark.
See Hormel Foods, 73 F.3d at 505 ([A]n inferior prod-
uct may cause injury to the plaintiff trademark owner
because people may think that the senior and junior
products came from the same source.). And it is un-
controverted that MOBs totes are not of the same
quality as Louis Vuittons handbags in a way that
might cause confusion as to source. (See Louis Vuit-
tons Oppn 24-25). So the seventh factor, the quality
of defendants product, is at best a wash. The final
36a

factor considers the sophistication of consumers and


the degree of care likely to be exercised in purchasing
the product. Tommy Hilfiger, 221 F. Supp. 2d at 420.
That factor favors MOB for two reasons. First, [t]he
substantial price of Louis Vuittons handbags re-
quires buyers to exercise care before they part with
their money, and such sophistication generally mili-
tates against a finding of a likelihood of confusion.
Charles of Ritz Grp. Ltd. v. Quality King Distribs.,
Inc., 832 F.2d 1317, 1323 (2d Cir. 1987). Second,
MOBs gimmick would be obvious to even its most un-
sophisticated customers, as one whole side of the tote
bag is blank except for the words My Other Bag . . .
. (See Op. App., Fig. C). Because the joke is obvious,
even a minimally prudent customer would not be con-
fused by the source or affiliation of [its products]. The
purchasing public must be credited with at least a
modicum of intelligence. Tommy Hilfiger, 221 F.
Supp. 2d at 420 (internal quotation marks omitted).
In sum, after considering all eight Polaroid factors
and looking at the products in their totality, Star In-
dus., 412 F.3d at 384, the Court concludes that there
is no triable issue of fact on the likelihood of confusion.
Rather, defendants use of the mark is an obvious par-
ody or pun, readily so perceived, and unlikely to cause
confusion among consumers. Tommy Hilfiger, 221 F.
Supp. 2d at 420. Nor does Louis Vuitton point to any
evidence that the public might think Louis Vuitton
sponsored or otherwise approved of MOBs bags. See
Star Indus., 412 F.3d at 383-84. Louis Vuitton sug-
gests otherwise by hypothesizing the possibility of
post-sale confusion specifically, an observer who
sees only the side of the MOB tote bag with the bag-
within-the-bag image and fails to notice that MOB
is substituted for LV. (Louis Vuittons Oppn 24).
37a

The Second Circuit, however, has generally found


post-sale confusion actionable only in the context of
knockoffs, see Hermes Intl v. Lederer de Paris Fifth
Ave., Inc., 219 F.3d 104, 108-09 (2d Cir. 2000) (gather-
ing cases), which is not the situation here. And in any
event, the argument fails on the merits. For one
thing, no reasonable observer is likely to infer from
the cartoon-like bag-within-the-bag design and the
juxtaposition of MOBs basic, canvas tote with the ex-
clusive, luxury status of Louis Vuitton that Louis
Vuitton sponsors or otherwise approves of MOBs tote
bags. For another, the test is not whether there is a
likelihood of confusion in a hypothetical scenario that
is most likely to result confusion. Instead, the test is
whether the overall impression created by the prod-
uct in the context in which [it is] found would cause
confusion among reasonable prospective purchas-
ers. Star Indus., 412 F.3d at 386. The overall im-
pression of MOBs totes in the context in which rea-
sonable prospective purchasers would find them cer-
tainly includes both sides of the bag. And when the
entirety of the bag is considered, there is no credible
risk that a reasonably prudent consumer would think
Louis Vuitton sponsored or otherwise approved of
MOBs totes.
C. Copyright Infringement
Finally, MOB moves for summary judgment with
respect to Louis Vuittons copyright infringement
claim. The Courts conclusions above effectively com-
pel the conclusion that any use by MOB of copyright-
able elements of Louis Vuittons prints qualifies as a
matter of law as fair use. See 17 U.S.C. 107 ([F]air
use of a copyrighted work . . . is not an infringement
of copyright.). Parody, like other forms of comment
or criticism, has an obvious claim to transformative
38a

value and may therefore be fair use under the Cop-


yright Act. Campbell, 510 U.S. at 579. For the pur-
poses of copyright law, . . . the heart of any parodists
claim to quote from existing material, is the use of
some elements of a prior authors composition to cre-
ate a new one that, at least in part, comments on that
authors works. Id. at 580. Of course, not all parody
is protected; instead, parody, like any other use, has
to work its way through the relevant factors, and be
judged case by case, in light of the ends of the copy-
right law. Id. at 581. Thus, in considering whether
MOBs use of any copyrightable material is fair, the
Court must consider the totality of the circumstances,
including the following factors: (1) the purpose and
character of the use, including whether such use is of
a commercial nature or is for nonprofit educational
uses; (2) the nature of the copyrighted work; (3) the
amount and substantiality of the portion used in rela-
tion to the copyrighted work as a whole; and (4) the
effect of the use upon the potential market for or value
of the copyrighted work. 17 U.S.C. 107.
Because Louis Vuitton attempts to use a copy-
right claim to pursue what is at its core a trademark
and trade dress infringement claim, application of the
fair-use factors under the Copyright Act to these facts
is awkward. Haute Diggity Dog, 507 F.3d at 269.
Nevertheless, weighing the factors, the Court con-
cludes that MOBs tote bags are protected by the fair
use doctrine. First, although commercial use tends
to weigh against a finding of fair use, Harper & Row,
Publishers, Inc. v. Nation Enters., 471 U.S. 539, 562
(1985), it is not presumptively unfair. Parody, even
when done for commercial gain, can be fair use. See
Campbell, 510 U.S. at 584-85. The second factor, the
nature of the copyrighted work, does not provide
39a

much help . . . in a parody case, since parodies almost


invariably copy publicly known, expressive works. Id.
at 586. The third factor requires a court to assess
whether the amount and substantiality of the por-
tion used in relation to the copyrighted work as a
whole . . . are reasonable in relation to the purpose of
the copying. Id. at 587 (quoting 17 U.S.C. 107(3)).
Here, MOBs use of Louis Vuittons patterns is reason-
able in relation to the purpose of the use after all,
MOBs totes must successfully conjure Louis Vuittons
handbags in order to make sense. Finally, although
MOBs totes are, in an abstract sense, in the same
market as Louis Vuittons handbags, its totes do not
serve[] as a market replacement for Louis Vuittons
bags in a way that would make it likely that cogniza-
ble market harm to [Louis Vuitton] will occur. Id. at
591. Indeed, as discussed above, any reasonable ob-
server would grasp that the whole point of MOBs in-
vocation of the my other car . . . trope is to communi-
cate that MOBs totes are not replacements for Louis
Vuittons designer handbags. See Cariou v. Prince,
714 F.3d 694, 707 (2d Cir. 2013) (What is critical [in
evaluating a fair use defense] is how the work in ques-
tion appears to the reasonable observer.).
CONCLUSION
Louis Vuitton is, by its own description, an ac-
tive[] and aggressive[] enforcer of its trademark
rights. (Louis Vuitton SOF 35). In some cases, how-
ever, it is better to accept the implied compliment in
[a] parody and to smile or laugh than it is to sue.
Tommy Hilfiger, 221 F. Supp. 2d at 412. This like
Haute Diggity Dog (and, arguably, Hyundai) is
such a case. MOBs use of Louis Vuittons marks in
service of what is an obvious attempt at humor is not
40a

likely to cause confusion or the blurring of the distinc-


tiveness of Louis Vuittons marks; if anything, it is
likely only to reinforce and enhance the distinctive-
ness and notoriety of the famous brand. Accordingly,
and for the reasons stated above, MOB is entitled to
summary judgment on all of Louis Vuittons claims; it
follows that Louis Vuittons own motion for partial
summary judgment must be and is denied.
In addition, Louis Vuittons motions to preclude
the expert testimony of William Locander (Docket No.
70) and to strike all or portions of Locanders and
MOB CEO Martins declarations (Docket Nos. 82, 84)
are denied as moot, as the Court did not rely on any of
the disputed submissions in resolving the parties
summary judgment motions. Finally, Louis Vuittons
motions for oral argument (Docket No. 96) and for a
conference regarding its motion to preclude expert tes-
timony (Docket No. 101) are also denied as moot.
41a

The Clerk of Court is directed to terminate Docket


Nos. 50, 62, 70, 82, 84, 96, and 101 and to terminate
this case. 7
SO ORDERED.
Date: January 6, 2016 _____________________
New York, New York JESSE M. FURMAN
United States District
Judge

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

Fig. A. Louis Vuitton Toile Monogram

Fig. B. Louis Vuitton SPEEDY Toile Monogram


43a

Fig. C. My Other Bags Zoey Tonal Brown Tote


(Front)

Fig. D My Other Bags Zoey Tonal Brown Tote


(Back)
44a

APPENDIX C

UNITED STATES COURT OF APPEALS


FOR THE
SECOND CIRCUIT
_______________________________________________
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 13th day of February,
two thousand seventeen.

Louis Vuitton Malletier, S.A.,


Plaintiff - Appellant, ORDER
v. Docket No: 16-241
My Other Bag, Inc.,
Defendant - Appellee.

Appellant, Louis Vuitton Malletier, S.A., filed a


petition for panel rehearing, or, in the alternative, for
rehearing en banc. The panel that determined the ap-
peal has considered the request for panel rehearing,
and the active members of the Court have considered
the request for rehearing en banc.
IT IS HEREBY ORDERED that the petition is de-
nied.
FOR THE COURT:
Catherine OHagan Wolfe,
Clerk
45a

APPENDIX D

UNITED STATES DISTRICT COURT SOUTH-


ERN DISTRICT OF NEW YORK

LOUIS VUITTON
MALLETIER, S.A.,
Plaintiff
14-CIVIL-3419 (JMF)
-v-
JUDGMENT
MY OTHER BAG,
INC.,
Defendant.

Plaintiff Louis Vuitton Malletier, S.A. (Louis


Vuitton) having brought claims against Defendant
My Other Bag, Inc. (MOB) with respect to MOB
totes that are concededly meant to evoke iconic Louis
Vuitton bags. More specifically, Louis Vuitton brings
claims against MOB for trademark dilution and in-
fringement under the Lanham Act, 15 U.S.C.
1125(c); a claim of trademark dilution under New
York law; and a claim of copyright infringement, and
whereas MOB having moved for summary judgment
on all of Louis Vuittons claims; and whereas Louis
Vuitton having filed a cross-motion for summary judg-
ment on its trademark dilution claims and its copy-
right infringement claim, and also moves to exclude
the testimony of MOBs expert and to strike the dec-
larations (or portions thereof) of MOBs expert and
MOBs founder and principal, and the matter having
come before the Honorable Jesse M. Furman, United
46a

States District Judge, and the Court, on January 6,


2016, having rendered its Opinion and Order (Doc.
#119) Louis Vuitton is, by its own description, an ac-
tive[] and aggressive[] enforcer of its trademark
rights. (Louis Vuitton SOF paragraph 35). In some
cases, however, it is better to accept the implied com-
pliment in [a] parody and to smile or laugh than it is
to sue. Tommy Hilfiger, 221 F. Supp. 2d at 412. This
- like Haute Diggity Dog (and, arguably, Hyundai) - is
such a case. MOBs use of Louis Vuittons marks in
service of what is an obvious attempt at humor is not
likely to cause confusion or the blurring of the distinc-
tiveness of Louis Vuittons marks; if anything, it is
likely only to reinforce and enhance the distinctive-
ness and notoriety of the famous brand. Accordingly,
and for the reasons stated in the Order, MOB is enti-
tled to summary judgment on all of Louis Vuittons
claims; it follows that Louis Vuittons own motion for
partial summary judgment must be and is denied. In
addition, Louis Vuittons motions to preclude the ex-
pert testimony of William Locander (Docket No. 70)
and to strike all or portions of Locanders and MOB
CEO Martins declarations (Docket Nos. 82, 84) are
denied as moot, as the Court did not rely on any of the
disputed submissions in resolving the parties sum-
mary judgment motions. Finally, Louis Vuittons mo-
tions for oral argument (Docket No. 96) and for a con-
ference regarding its motion to preclude expert testi-
mony (Docket No. 101) are also denied as moot; and
directing the Clerk of Court to terminate Docket Nos.
50, 62, 70, 82, 84, 96, and 101 and to terminate this
case, it is,
ORDERED, ADJUDGED AND DECREED:
That for the reasons stated in the Courts Opinion and
Order dated January 6, 2016, Louis Vuitton is, by its
47a

own description, an active[] and aggressive[] en-


forcer of its trademark rights. (Louis Vuitton SOF
paragraph 35). In some cases, however, it is better to
accept the implied compliment in [a] parody and to
smile or laugh than it is to sue. Tommy Hilfiger, 221
F. Supp. 2d at 412. This - like Haute Diggity Dog (and,
arguably, Hyundai) - is such a case. MOBs use of
Louis Vuittons marks in service of what is an obvious
attempt at humor is not likely to cause confusion or
the blurring of the distinctiveness of Louis Vuittons
marks; if anything, it is likely only to reinforce and
enhance the distinctiveness and notoriety of the fa-
mous brand. Accordingly, and for the reasons stated
in the Order, MOB is entitled to summary judgment
on all of Louis Vuittons claims; it follows that Louis
Vuittons own motion for partial summary judgment
must be and is denied. In addition, Louis Vuittons
motions to preclude the expert testimony of William
Locander (Docket No. 70) and to strike all or portions
of Locanders and MOB CEO Martins declarations
(Docket Nos. 82, 84) are denied as moot, as the Court
did not rely on any of the disputed submissions in re-
solving the parties summary judgment motions. Fi-
nally, Louis Vuittons motions for oral argument
(Docket No. 96) and for a conference regarding its mo-
tion to preclude expert testimony (Docket No. 101) are
also denied as moot; accordingly, the case is closed.
Dated: New York, New York
January 8, 2016
RUBY J. KRAJICK
Clerk of Court
BY:
Deputy Clerk
48a

APPENDIX E

U.S. Const. amend. I


Congress shall make no law respecting an estab-
lishment of religion, or prohibiting the free exercise
thereof; or abridging the freedom of speech, or of the
press; or the right of the people peaceably to assemble,
and to petition the Government for a redress of griev-
ances.
15 U.S.C. 1125
1125. False designations of origin, false de-
scriptions, and dilution forbidden
(a) Civil action
(1) Any person who, on or in connection with any
goods or services, or any container for goods, uses in
commerce any word, term, name, symbol, or device, or
any combination thereof, or any false designation of
origin, false or misleading description of fact, or false
or misleading representation of fact, which
(A) is likely to cause confusion, or to cause mistake, or
to deceive as to the affiliation, connection, or associa-
tion of such person with another person, or as to the
origin, sponsorship, or approval of his or her goods,
services, or commercial activities by another person,
or
(B) in commercial advertising or promotion, misrep-
resents the nature, characteristics, qualities, or geo-
graphic origin of his or her or another persons goods,
services, or commercial activities, shall be liable in a
civil action by any person who believes that he or she
is or is likely to be damaged by such act.
49a

(2) As used in this subsection, the term any person


includes any State, instrumentality of a State or em-
ployee of a State or instrumentality of a State acting
in his or her official capacity. Any State, and any such
instrumentality, officer, or employee, shall be subject
to the provisions of this chapter in the same manner
and to the same extent as any nongovernmental en-
tity.
(3) In a civil action for trade dress infringement un-
der this chapter for trade dress not registered on the
principal register, the person who asserts trade dress
protection has the burden of proving that the matter
sought to be protected is not functional.
(b) Importation
Any goods marked or labeled in contravention of the
provisions of this section shall not be imported into
the United States or admitted to entry at any cus-
tomhouse of the United States. The owner, importer,
or consignee of goods refused entry at any cus-
tomhouse under this section may have any recourse
by protest or appeal that is given under the customs
revenue laws or may have the remedy given by this
chapter in cases involving goods refused entry or
seized.
(c) Dilution by blurring; dilution by tarnish-
ment
(1) Injunctive relief
Subject to the principles of equity, the owner of a fa-
mous mark that is distinctive, inherently or through
acquired distinctiveness, shall be entitled to an in-
junction against another person who, at any time af-
ter the owners mark has become famous, commences
use of a mark or trade name in commerce that is likely
50a

to cause dilution by blurring or dilution by tarnish-


ment of the famous mark, regardless of the presence
or absence of actual or likely confusion, of competition,
or of actual economic injury.
(2) Definitions
(A) For purposes of paragraph (1), a mark is famous if
it is widely recognized by the general consuming pub-
lic of the United States as a designation of source of
the goods or services of the marks owner. In deter-
mining whether a mark possesses the requisite degree
of recognition, the court may consider all relevant fac-
tors, including the following:
(i) The duration, extent, and geographic reach of ad-
vertising and publicity of the mark, whether adver-
tised or publicized by the owner or third parties.
(ii) The amount, volume, and geographic extent of
sales of goods or services offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act
of March 3, 1881, or the Act of February 20, 1905, or
on the principal register.
(B) For purposes of paragraph (1), dilution by blur-
ring is association arising from the similarity be-
tween a mark or trade name and a famous mark that
impairs the distinctiveness of the famous mark. In
determining whether a mark or trade name is likely
to cause dilution by blurring, the court may consider
all relevant factors, including the following:
(i) The degree of similarity between the mark or
trade name and the famous mark.
(ii) The degree of inherent or acquired distinctiveness
of the famous mark.
51a

(iii) The extent to which the owner of the famous mark


is engaging in substantially exclusive use of the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name in-
tended to create an association with the famous mark.
(vi) Any actual association between the mark or trade
name and the famous mark.
(C) For purposes of paragraph (1), dilution by tar-
nishment is association arising from the similarity
between a mark or trade name and a famous mark
that harms the reputation of the famous mark.
(3) Exclusions
The following shall not be actionable as dilution by
blurring or dilution by tarnishment under this subsec-
tion:
(A) Any fair use, including a nominative or descrip-
tive fair use, or facilitation of such fair use, of a fa-
mous mark by another person other than as a desig-
nation of source for the persons own goods or services,
including use in connection with
(i) advertising or promotion that permits consumers
to compare goods or services; or
(ii) identifying and parodying, criticizing, or com-
menting upon the famous mark owner or the goods or
services of the famous mark owner.
(B) All forms of news reporting and news commen-
tary.
(C) Any noncommercial use of a mark.
(4) Burden of proof
52a

In a civil action for trade dress dilution under this


chapter for trade dress not registered on the principal
register, the person who asserts trade dress protection
has the burden of proving that
(A) the claimed trade dress, taken as a whole, is not
functional and is famous; and
(B) if the claimed trade dress includes any mark or
marks registered on the principal register, the unreg-
istered matter, taken as a whole, is famous separate
and apart from any fame of such registered marks.
(5) Additional remedies
In an action brought under this subsection, the owner
of the famous mark shall be entitled to injunctive re-
lief as set forth in section 1116 of this title. The owner
of the famous mark shall also be entitled to the reme-
dies set forth in sections 1117(a) and 1118 of this title,
subject to the discretion of the court and the principles
of equity if
(A) the mark or trade name that is likely to cause di-
lution by blurring or dilution by tarnishment was first
used in commerce by the person against whom the in-
junction is sought after October 6, 2006; and
(B) in a claim arising under this subsection
(i) by reason of dilution by blurring, the person
against whom the injunction is sought willfully in-
tended to trade on the recognition of the famous mark;
or
(ii) by reason of dilution by tarnishment, the person
against whom the injunction is sought willfully in-
tended to harm the reputation of the famous mark.
53a

(6) Ownership of valid registration a complete bar to


action The ownership by a person of a valid registra-
tion under the Act of March 3, 1881, or the Act of Feb-
ruary 20, 1905, or on the principal register under this
chapter shall be a complete bar to an action against
that person, with respect to that mark, that
(A)(i) is brought by another person under the common
law or a statute of a State; and (ii) seeks to prevent
dilution by blurring or dilution by tarnishment; or
(B) asserts any claim of actual or likely damage or
harm to the distinctiveness or reputation of a mark,
label, or form of advertisement.
(7) Savings clause
Nothing in this subsection shall be construed to im-
pair, modify, or supersede the applicability of the pa-
tent laws of the United States.
(d) Cyberpiracy prevention
(1)(A) A person shall be liable in a civil action by the
owner of a mark, including a personal name which is
protected as a mark under this section, if, without re-
gard to the goods or services of the parties, that per-
son
(i) has a bad faith intent to profit from that mark,
including a personal name which is protected as a
mark under this section; and
(ii) registers, traffics in, or uses a domain name
that
(I) in the case of a mark that is distinctive at the time
of registration of the domain name, is identical or con-
fusingly similar to that mark;
54a

(II) in the case of a famous mark that is famous at the


time of registration of the domain name, is identical
or confusingly similar to or dilutive of that mark; or
(III) is a trademark, word, or name protected by rea-
son of section 706 of title 18 or section 220506 of title
36.
(B)(i) In determining whether a person has a bad faith
intent described under subparagraph (A), a court may
consider factors such as, but not limited to
(I) the trademark or other intellectual property
rights of the person, if any, in the domain name;
(II) the extent to which the domain name consists of
the legal name of the person or a name that is other-
wise commonly used to identify that person;
(III) the persons prior use, if any, of the domain name
in connection with the bona fide offering of any goods
or services;
(IV) the persons bona fide noncommercial or fair use
of the mark in a site accessible under the domain
name;
(V) the persons intent to divert consumers from the
mark owners online location to a site accessible under
the domain name that could harm the goodwill repre-
sented by the mark, either for commercial gain or with
the intent to tarnish or disparage the mark, by creat-
ing a likelihood of confusion as to the source, sponsor-
ship, affiliation, or endorsement of the site;
(VI) the persons offer to transfer, sell, or otherwise
assign the domain name to the mark owner or any
third party for financial gain without having used, or
having an intent to use, the domain name in the bona
fide offering of any goods or services, or the persons
prior conduct indicating a pattern of such conduct;
55a

(VII) the persons provision of material and mislead-


ing false contact information when applying for the
registration of the domain name, the persons inten-
tional failure to maintain accurate contact infor-
mation, or the persons prior conduct indicating a pat-
tern of such conduct;
(VIII) the persons registration or acquisition of mul-
tiple domain names which the person knows are iden-
tical or confusingly similar to marks of others that are
distinctive at the time of registration of such domain
names, or dilutive of famous marks of others that are
famous at the time of registration of such domain
names, without regard to the goods or services of the
parties; and
(IX) the extent to which the mark incorporated in the
persons domain name registration is or is not distinc-
tive and famous within the meaning of subsection (c).
(ii) Bad faith intent described under subparagraph (A)
shall not be found in any case in which the court de-
termines that the person believed and had reasonable
grounds to believe that the use of the domain name
was a fair use or otherwise lawful.
(C) In any civil action involving the registration, traf-
ficking, or use of a domain name under this para-
graph, a court may order the forfeiture or cancellation
of the domain name or the transfer of the domain
name to the owner of the mark.
(D) A person shall be liable for using a domain name
under subparagraph (A) only if that person is the do-
main name registrant or that registrants authorized
licensee.
(E) As used in this paragraph, the term traffics in
refers to transactions that include, but are not limited
56a

to, sales, purchases, loans, pledges, licenses, ex-


changes of currency, and any other transfer for con-
sideration or receipt in exchange for consideration.
(2)(A) The owner of a mark may file an in rem civil
action against a domain name in the judicial district
in which the domain name registrar, domain name
registry, or other domain name authority that regis-
tered or assigned the domain name is located if
(i) the domain name violates any right of the owner
of a mark registered in the Patent and Trademark Of-
fice, or protected under subsection (a) or (c) of this sec-
tion; and
(ii) the court finds that the owner
(I) is not able to obtain in personam jurisdiction over
a person who would have been a defendant in a civil
action under paragraph (1); or
(II) through due diligence was not able to find a per-
son who would have been a defendant in a civil action
under paragraph (1) by
(aa) sending a notice of the alleged violation and in-
tent to proceed under this paragraph to the registrant
of the domain name at the postal and e-mail address
provided by the registrant to the registrar; and
(bb) publishing notice of the action as the court may
direct promptly after filing the action.
(B) The actions under subparagraph (A)(ii) shall con-
stitute service of process.
(C) In an in rem action under this paragraph, a do-
main name shall be deemed to have its situs in the
judicial district in which
57a

(i) the domain name registrar, registry, or other do-


main name authority that registered or assigned the
domain name is located; or
(ii) documents sufficient to establish control and au-
thority regarding the disposition of the registration
and use of the domain name are deposited with the
court.
(D)(i) The remedies in an in rem action under this par-
agraph shall be limited to a court order for the forfei-
ture or cancellation of the domain name or the trans-
fer of the domain name to the owner of the mark.
Upon receipt of written notification of a filed, stamped
copy of a complaint filed by the owner of a mark in a
United States district court under this paragraph, the
domain name registrar, domain name registry, or
other domain name authority shall
(I) expeditiously deposit with the court documents
sufficient to establish the courts control and authority
regarding the disposition of the registration and use
of the domain name to the court; and
(II) not transfer, suspend, or otherwise modify the do-
main name during the pendency of the action, except
upon order of the court.
(ii) The domain name registrar or registry or other do-
main name authority shall not be liable for injunctive
or monetary relief under this paragraph except in the
case of bad faith or reckless disregard, which includes
a willful failure to comply with any such court order.
(3) The civil action established under paragraph (1)
and the in rem action established under paragraph
(2), and any remedy available under either such ac-
tion, shall be in addition to any other civil action or
remedy otherwise applicable.
58a

(4) The in rem jurisdiction established under para-


graph (2) shall be in addition to any other jurisdiction
that otherwise exists, whether in rem or in personam.

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