Louis Vuitton — the big IP player that keeps on giving

Ah hah!  Two of my favorite subjects, like peanut butter and chocolate, in one candy bar:

prof amici in @LouisVuitton case argue federal trademark dilution statute “is in fatal tension w/ 1st amendment.” https://t.co/32ifXNWeWs

— alexandra j. roberts (@lexlanham) August 27, 2016

From the “On the Case” Reuters post by Alison Frankel:

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.” . . .

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.

Cool, right?  And here come the profs:

The Second Circuit

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 can see it.  As I’ve recently said, I’ve long had my problems with the abuse of the trademark dilution “tort,” notwithstanding that I’ve defended — from a brand management prospective — no less than Louis Vuitton itself for using the law expansively, given its current state.  (Notwithstanding the support, I don’t think they like me there anyway.)

More from Alison’s excellent piece:

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.

Sourpuss Vuitton’s “own aggressiveness backfire”?  Tell me another!