Plaintiffs in two recent Intellectual Property cases were urged from the bench to have a little bit more humor.
In the first case, Louis Vuitton Malletier, S.A. (Vuitton) sued My Other Bag, Inc. (MOB) for trademark infringement, trademark dilution, and copyright infringement in the Southern District of New York (SDNY). MOB moved for summary judgment and Judge Furman from the SDNY granted the motion on January 6, 2016.
MOB sells canvas tote bags printed with “My Other Bag…” on one side and drawings of luxury handbags, on the other. One of MOB’s bags features a drawing of a Louis Vuitton bag.The handbag at stake reproduced an image drawn to evoke a Louis Vuitton monogram bag, but which did not faithfully reproduce it. For example, the monogram of the MOB bag bears ‘MOB’ initials, not ‘LV’ as in the luxury bags.
Tara Martin, the founder of MOB, testified that the name of her company, “My Other Bag,” was inspired by the “My other car is [insert luxury car]…” bumper stickers often seen on the well-worn bumpers of beaten up or inexpensive cars. Judge Furman wondered if Plaintiff was “perhaps unfamiliar with the “my other car” trope. Or maybe it just cannot take a joke.”
Vuitton claimed the bag diluted its trademark by blurring , but the Judge Furman held that the MOB bags do not dilute the Louis Vuitton trademark by blurring, neither under the Lanham Act, 15 U.S.C. § 1125(c), nor under New York General Business Law § 360-l. Dilution by blurring has been defined by the Second Circuit as “the gradual diminishment of a famous mark’s acquired ability… to clearly and unmistakably distinguish one source through unauthorized use,” Hormel Foods Corp. v. Jim Henson Prods., Inc. The New York statute does not require the allegedly blurred mark to be famous.
Fair Use Defense to Trademark Dilution Claim
The Trademark Act provides for a fair use defense, as 15 U.S.C. § 1125(c)(3) provides that “[a]ny fair use … of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with… identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner” is not dilution by blurring or by tarnishment.
While the Trademark Act does not define “ parody,” the Fourth Circuit defined it, in a case where Louis Vuitton was also the Plaintiff, as the juxtaposition of “the irreverent representation of the trademark with the idealized image created by the mark’s owner, ”Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC.
Judge Furman found that the MOB bag parodied Louis Vuitton bags and was therefore protected by fair use. The MOB bags clearly indicate to the ordinary observer “that the defendant is not connected in any way with the owner of the target trademark.” Judge Furman reasoned that this is precisely what MOB is conveying, by using the well-worn “my other car is [luxurious and expensive]” joke to convey that MOB bag is not a Vuitton bag, and further noted that
“That joke — combined with the stylized, almost cartoonish renderings of Louis Vuitton’s bags depicted on the totes — builds significant distance between MOB’s 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.
And the fact that Louis Vuitton at least does not find the comparison funny is immaterial; Louis Vuitton’s sense of humor (or lack thereof) does not delineate the parameters of its rights (or MOB’s rights) under trademark law”
While New York law does provide a fair use defense, the SDNY considered that since New York anti-dilution law is “substantively similar” to federal law, both claims “may be analyzed together,” and noted that “courts have held that when a defendant establishes fair use for purposes of federal law, related state law claims also fail.“
No Infringement of Foot Bag Champion Right of Publicity
In another case, Martin v. Living Essentials, LLC, the holder of the world record for the most consecutive hacky sacks (a sort of footbag) kicks sued the maker of a five-hour energy drink. Martin claimed that Defendant’s commercial infringed his right of publicity rights under the Illinois Right to Publicity Act (IRPA) and also was false advertising under the Lanham Act, 15 U.S.C. § 1125. The commercial featured an actor pretending that Defendant’s energy drink had allowed him, in the last five hours, to perform such diverse feats as disproving the theory of relativity, swimming the English Channel (and back!), finding Bigfoot, and mastering origami while beating “the record for Hacky Sack.”
Judge John J. Tharp, Jr. from the Northern District of Illinois, started his order dismissing plaintiff’s claim with an Oscar Wilde quote: “It is a curious fact that people are never so trivial as when they take themselves seriously.”
Judge Tharp found the IRPA claim to be time-barred and dismissed it, but nevertheless discussed the claim and found it would not have succeed even if Plaintiff’s claim had not been time-barred.
Defendant had argued that it had not used Plaintiff’s name or likeness in its commercial. However, this argument alone was not enough to dismiss the claim, as the IRPA broadly defines “identity” as “any attribute of an individual that serves to identify that individual to an ordinary, reasonable viewer or listener.” Being the holder of a footbag record is indeed part of Plaintiff’s identity.
But Judge Tharp found that the phrase used in the commercial, “the record for Hacky Sack,” does not identify Plaintiff, as it is “far too ambiguous to do so.” Judge Tharp pointed out that there are several other records listed as Footbag Guinness World Record, which Plaintiff himself admitted, thus “effectively conced[ing] the ambiguity of a reference to “the Hacky Sack record.”
But the most conclusive argument in favor of dismissing the case was that the commercial was meant to be a joke, and that the outrageous claims made by the actor “[were] not intended to be taken as true.” Judge Tharp also pointed out that the commercial includes a disclaimer, and portrays someone who not only holds a footbag record, but is also a physics genius, accomplished hunter, swimmer and origami master, which Plaintiff does not claim to be.
Judge Tharp concluded:
“To the maxim de minimis non curat lex, then, let us add a complementary proscription: defectum humoris non curat lex—the law does not reward humorlessness. Martin’s premise that the Commercial exploits his identity because someone might believe that the actor (or whoever he portrays) actually broke Martin’s record depends on an interpretation so blind to its comedic nature that it is unreasonable and therefore beyond the law’s protection.”
Plaintiff’s claims for false advertising claim under the Lanham Act also failed because the commercial is
“an obvious farce that would not lead anyone to believe that Martin, or anyone else, had actually accomplished all of the remarkable feats described. Even unsophisticated consumers would get the joke.”
Therefore, there could not have been any consumer confusion, and the commercial is “better described as farce than mere puffery—upon which no reasonable consumer would rely.“
The judges in these two cases pointed out that Plaintiffs lacked a sense of humor. But they also assumed that consumers (us!) generally have enough sense of humor as not to be confused as to the source of a product, or to the identity of a person. The law assumes that the average consumer has a sense of humor. It is comforting to know.
Image is courtesy of Flickr user RLEVANS under a CC BY-ND 2.0 license.
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