Second Circuit denies Louis Vuitton parody rehearing
The US Court of Appeals for the Second Circuit has refused (pdf) to rehear Louis Vuitton’s trademark and copyright dispute with My Other Bag (MOB).
WIPR previously reported that Louis Vuitton had filed its request for an en banc rehearing, or alternatively a panel rehearing, in January.
On Monday, February 13, the Second Circuit denied the request.
“The panel that determined the appeal has considered the request for panel rehearing, and the active members of the court have considered the request for rehearing en banc,” said the order.
The dispute began when Louis Vuitton filed a trademark claim against MOB, alleging that a bag that featured the company’s Toile Monogram design, as well other bags, diluted its famous brand.
Louis Vuitton also argued that MOB infringed its copyright.
In January last year, District Judge Jesse Furman at the US District Court for the Southern District of New York rejected the luxury brand’s complaint that MOB had infringed its IP rights.
Later that month, Louis Vuitton filed an appeal against the ruling but, in December, the Second Circuit panel affirmed the district court’s ruling.
Louis Vuitton then requested the rehearing, arguing that the Second Circuit based its finding of a parody “solely on its subjective view” that MOB’s products” were obviously a joke.
WIPR readers, when surveyed, were closely split over whether the Second Circuit should have agreed to rehear the parody dispute.
In the survey, 55% of our readers believed the court should not grant the appeal, with one reader claiming that the case was “trivial”.
David Bernstein, chair of Debevoise & Plimpton’s IP litigation group, said the decision not to rehear the case en banc is not surprising, given how the court ruled the first time.
“But it is disappointing that the courts have been hostile to Louis Vuitton's claims. MOB is able to sell cheap canvas bags at a premium because they have copied Louis Vuitton's and other brand owners' designs and reproduced them on their bags,” he said.
He warned that if this kind of copying is allowed to proliferate on other products and by other marketers, it could eventually “undermine the distinctiveness of Louis Vuitton’s designs”, which is why the courts should have “recognised that MOB's conduct is classic trademark dilution”.
David Bernstein is a WIPR Leader for 2016. His profile is available here.
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