Louis Vuitton's Inability To Take A Joke Opens Up A Chance To Fix Our Broken Trademark Laws

from the my-other-bag--has-law-professors dept

As you may recall, earlier this year we wrote about a good ruling in a ridiculous lawsuit by the notoriously overaggressive trademark enforcers at luxury goods giant Louis Vuitton. You can look back at some of their earlier lawsuits, but the one we wrote about this year was particularly ridiculous. It sued a small bag maker called "My Other Bag" who made a simple tote bag that played on the famous joke bumper sticker "My Other Car is A...." with some sort of luxury car brand listed as the final point. People would put those on not-nearly-as-nice cars. In fact, when I was a kid, my dad had a Ford Pinto (yes, the exploding kind) and it had "My Other Car is a Porsche" as a bumper sticker. It's not a very funny joke (and I totally didn't get it as a kid), but it's a joke. And a fairly common one. So My Other Bag did the same thing with the following tote:
Got it? That's a picture of a bag that looks like a Louis Vuitton bag on the side of a tote. It's obviously a joke, and the district court made that point to LV:
Louis Vuitton is, by its own description, an “active[] and aggressive[]” enforcer of its trademark rights.... 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....
The court later pointed out that the fact that LV doesn't find the joke funny is immaterial.

For whatever reason, LV appealed this decision. And while one hopes that the appeals court will make quick work of the case and back the district court ruling, something interesting may be happening as well. A group of law professors has jumped into the case with a fascinating amicus brief, not just arguing in favor of My Other Bag, but actually making a constitutional argument that the very concept of dilution in trademark law is unconstitutional under the First Amendment.

A little background first: as we've noted many times over the years, the original intent of trademark law was not to be some form of "intellectual property" akin to patents or copyrights. Instead it was designed as a consumer protection statute, to protect individuals from buying Bob's Cola thinking that it was really Coca Cola. That is, trademark isn't about locking up some sort of "property right" as much as it's a way to protect consumers from being fooled or tricked into buying a product that is not what it says it is. And yet, as the concept of "intellectual property" became a bigger and bigger thing, trademark lawyers kept repositioning trademark law as being just a third prong of the same kind of "intellectual property" as patents or copyrights.

A key part of this was inventing, basically out of thin air, the concept of "dilution." Historically, in order to prove trademark infringement, you had to show "a likelihood of confusion" from consumers, fitting with the point above about how it's for consumer protection. However, trademark lawyers found that way too constraining, and added this idea of "dilution," which was a situation where you could be found to violate trademark law if you merely "diluted" the original mark, even if there were no likelihood of confusion. For years, we've pointed out what a bad idea this was, but Congress, always eager to do short-sighted things in support of expanding intellectual property concepts, allowed the concept of "dilution" to be added to trademark law.

Enter the amicus brief from a group of excellent law professors, led by Chris Sprigman and Rebecca Tushnet (both of whom have been mentioned here on Techdirt many times before). The brief was also signed by some other legal all-stars, including Pam Samuelson, Mark Lemley and Robert Brauneis (also mentioned here many times). They argue, first, that MOB isn't causing any customer confusion. But then they also argue that the very concept of dilution itself is unconstitutional as a restriction on the First Amendment:
At the outset, it is important to recognize that the First Amendment landscape has changed substantially in recent years. This Court has ruled that content-based suppression of non-misleading speech, including non-misleading commercial speech, is presumptively unconstitutional and, to be upheld, must be shown to be narrowly tailored to serve compelling state interests....


Trademark law’s anti-dilution provision creates a content-based right that applies to non-misleading commercial speech. Unlike defamation, it is a right unknown to the Framers of the Constitution. It was developed in the early decades of the twentieth century, when truthful commercial speech received no constitutional protection. 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. 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. Yet Congress provided no compelling interest to sustain its new restriction on non-misleading commercial speech when it enacted the federal dilution law, nor did it attempt to use the least restrictive means to achieve any such interest
In other words, there's a big problem with the very concept of dilution in trademark law, and it's about time someone did something about it.

Chances are this argument goes nowhere right now. Courts are (somewhat reasonably) loathe to take on constitutional issues when they can deal with a case directly on the law. And in this case, it seems fairly clear that My Other Bag's totes are not confusing and not trademark infringing in the slightest. So it's possible that the 2nd Circuit will avoid the constitutional issue altogether. But this is an issue that's not going away. There's been a pretty constant push to expand dilution law and lots of big companies regularly claim dilution to get around a lack of customer confusion in trademark lawsuits. That means that sooner or later a court is really going to have to address this issue, and it's difficult to see how the dilution concept can pass First Amendment muster.
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Filed Under: dilution, first amendment, jokes, trademark
Companies: louis vuitton, lvmh, my other bag

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  1. identicon
    Anonymous Coward, 31 Aug 2016 @ 11:23pm

    Re: Re:

    Nice try (complete with insults), but your sources don't actually say what you want them to say. Notice that all the quotes you mention talk about stopping "deception." And "unfair competition" is the same exact issue. The "unfair" part about the competition is that it's designed to fool consumers. The fact that it harms both the producer and the consumer is meaningless here. The idea was to prevent consumer confusion.

    Looking past the hilariousness that you still, after all these years, have no idea what unfair competition is, my sources do not say that the "idea was to prevent consumer confusion." You really should take an hour or two and actually read McKenna's paper. His message is quite the opposite, and he calls your view a "falsely imagined past." He continues:
    In reality, “traditional” American trademark law was unapologetically producer-oriented. Trademark law, indeed all of unfair competition law, was designed to promote commercial morality and protect producers from illegitimate attempts to divert their trade. Consumer confusion was relevant to the traditional determination of infringement not for its own sake, but because deceiving consumers was a particularly effective way of stealing a competitor's trade. . . . Trademark law primarily sought to regulate the relationship between competitors; any benefits to consumers were secondary.
    How does that not support what I'm saying, i.e., that McKenna shows that preventing consumer confusion was not the primary, original goal of trademark? And, honestly, why are you so opposed to actually learning more about the historical foundations of IP? I know it doesn't suit your narrative, but your misrepresentations appear intentional at this point. That's why I say you don't care about the truth. I've seen you ignore the truth for so many years that I can see deduce no alternative.

    It's dilution that was added late to the game, and then lawyers looked to retroactively make it look like it had always been there.

    Yes, dilution came later. But that does not change the fact that protecting PRODUCERS came first, followed by the later-coming notion that protecting CONSUMERS was also an end unto itself.

    So, yeah, I guess since your sources don't actually say what you wanted them to say, you felt the need to resort to ad homs instead. Typical. But, really, doesn't it get kind of tiring to have to always do that kind of thing?

    My sources say exactly what I said they say. Tiring? Not in the least. I'm happy to spend my time teaching you things. The weird part is that you are so completely closed to the idea that I might even know something you don't. In my experience, based on years of observations and interactions, you vastly over-simplify IP, leaving out the inconvenient truths that you simply don't like.

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