Beneath Louis Vuitton’s inability to take a joke, a serious First Amendment question

August 26, 2016

(Reuters) – To just about everyone but Louis Vuitton, the joke is obvious. Inexpensive canvas totes decorated with cartoon versions of famously expensive, iconic designer handbags? That’s funny – especially because the name of the company that makes the totes is My Other Bag, a play on the “My other car is a ” bumper stickers people used to paste on beat-up cars. To highlight the humor, the company name appears in large, loopy script on the other side of the tote bags. No one with even the faintest sense of irony would confuse My Other Bag’s $35 tote bags with actual Louis Vuitton (or Chanel, Hermes or Fendi) pocketbooks.

Louis Vuitton, of course, is famous for its inability to tolerate any ribbing, however gentle, that involves its classic toile monogram. In 2014, the company sued My Other Bag in federal court in Manhattan for trademark dilution and copyright and trademark infringement. U.S. District Judge Jesse Furman granted summary judgment to My Other Bag on all of Louis Vuitton’s claims last January, writing (with his own cheekiness) that the handbag maker “is perhaps unfamiliar with the ‘my other car’ trope. Or maybe it just cannot take a joke.”

Judge Furman’s opinion is 31 pages long and discusses the multi-pronged test for trademark infringement, but in essence, he said My Other Bag is making fair use of Louis Vuitton’s trademarks because it’s just engaged in gentle parody. “MOB’s use of Louis Vuitton’s 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 Vuitton’s marks,” the judge wrote. “If anything, it is likely only to reinforce and enhance the distinctiveness and notoriety of the famous brand.”

Proving that it has absolutely no sense of humor (in the unlikely event more evidence were needed), Louis Vuitton appealed the summary judgment ruling to the 2nd U.S. Circuit Court of Appeals, arguing that Judge Furman misapplied the law.

That’s when things got interesting: The case blew up into a full-fledged constitutional inquiry into the intersection of trademark law and the First Amendment. Judge Furman mentioned the First Amendment only glancingly in his opinion, quoting from a 1994 2nd Circuit opinion that said jokes need not be funny to be protected by the constitution. But in their response to Vuitton, My Other Bag’s lawyers at Koppel Patrick Heybl & Philpott and Miller Korzenik Sommers raised the argument that, as parody, the Vuitton-esque canvas totes are entitled to “robust protection under the First Amendment.” That constitutional protection, My Other Bag said, provides an alternative justification for summary judgment against Vuitton.

Last week, a distinguished group of law professors specializing in intellectual property raised the First Amendment stakes in the appeal. According to the professors’ amicus brief, written by Rebecca Tushnet of Georgetown and Christopher Sprigman of New York University, one of the laws Louis Vuitton relied upon to state a claim against My Other Bag is probably unconstitutional.

In the Trademark Dilution Revision Act of 2006, Congress updated the Trademark Act to protect famous brands from being blurred or tarnished by knockoffs. Louis Vuitton claimed My Other Bag’s reference to its toile monogram did both, in violation of the 2006 statute.

The law professors responded that the Trademark Dilution law manufactures “a right unknown to the Framers of the Constitution.” That right, at least as Louis Vuitton wants to wield the statute, is in fatal tension with the First Amendment, according to the amicus brief, which cites the 2nd Circuit’s 2012 expansion of free speech rights in U.S. v. Caronia.

“LV claims that dilution law allows it to prevent the creation of unauthorized new associations with its mark, which is to say, to prevent consumers from forming new opinions and beliefs even in the absence of deception,” the brief said. “This is not just content-based suppression of speech, it is viewpoint-based suppression of speech – the prime evil against which the First Amendment protects.”

I checked with Tushnet to make sure I was reading the brief correctly. Were the professors really calling the 10-year-old Trademark Dilution law unconstitutional under the First Amendment? “Yes, we are arguing that at least most of the dilution law, and probably all, is unconstitutional as a regulation of non-misleading speech,” Tushnet responded in an email.

Louis Vuitton, represented by Barack Ferrazzano Kirschbaum & Nagelberg and Lupkin & Associates responded this week in a reply brief describing the professors’ insistence on First Amendment protection for all non-misleading commercial speech as “radical” and “extreme.”

“Not only did Congress reject these views when it enacted TDRA, but no case has found any problem in Congress’ balancing of trademark rights and First Amendment concerns in that statute,” the Vuitton brief said. The law does not restrict speech based on its content, the Vuitton brief said, and contains a fair-use exception to take care of First Amendment tension.

The Trademark Dilution law’s fair-use exception, which Judge Furman relied on in his summary judgment opinion, may end up short-circuiting constitutional consideration by the 2nd Circuit. Courts, as you know, are supposed to avoid confronting constitutional questions if there are other ways to decide a case. Considering that the trial judge found other reasons to rule against Louis Vuitton, it’s entirely plausible that the 2nd Circuit will follow the doctrine constitutional avoidance as well.

I hope it doesn’t. It would be so right for Louis Vuitton – perhaps the most relentless trademark protector in the U.S. court system – to be in the middle of a constitutional challenge to one of its most potent weapons. I’m sure Louis Vuitton would see no humor in the possibility that its own aggressiveness could backfire. But I suspect some defendants might.

I left a phone message for Vuitton counsel Robert Shapiro of Barack Ferrazzano but didn’t hear back.

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