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, 1 Sep 2016 @ 12:34am

    Re: Re: Re: Re:

    I wasn't addressing McKenna's paper. As you know, McKenna has a long history of writing papers biased to your general IP maximalist position. I don't take him very seriously.

    This pretty much sums up your ridiculous approach to IP. You simply label McKenna a "maximalist" and then refuse to engage anything he says on the merits. Of course, you simply cannot refute his claims, so your only play is to brush him aside in this manner. It's predictable on your part--hence my prediction that you won't read his paper or actually discuss the possibility that maybe you don't grasp the foundations of trademark law. You've proved me right already.

    The reality is that McKenna has written extensively about how trademark law has become unmoored from its original purpose. For example, his paper with that crazy maximalist Mark Lemley: http://law.stanford.edu/wp-content/uploads/sites/default/files/publication/259015/doc/slspublic/Irre levant%20Confusion%20Lemley.pdf

    If you bothered to read McKenna's scholarship--which we both know you won't do--you'd know that he thinks trademark law has gone too far. As is typical, you assume that if the foundation of trademark law is to protect producers, the end result must be trademark law gone amok. McKenna shows that the reason trademark law has gone off the rails is because the relatively modern concern of consumer confusion. If trademark law were to return to its unfair competition roots, the doctrines would not be so expansive. So while you label him, wrongly, as a "maximalist," his scholarship shows that he's not so.

    Coincidentally, the same dynamic appears in other branches of IP. You think that anyone recognizing copyrights, trade secrets, patents, etc. as property are maximalists who would expand those doctrines far and wide. The reality is that by focusing on the original roots of those doctrines, the expansions are much harder to justify. I know this is counter-intuitive for you, as it doesn't comport with the conventional wisdom you've adopted without much thought, but I'll just throw it out there anyway.

    I was talking about your quotes of the law itself, which make it quite clear that they're talking about unfair competition and deception. Yes, as part of commercial law, it's designed to protect the producers, but FOR THE PURPOSE of not deceiving consumers. i.e., both issues are satisfied under it. But trademark law was NEVER meant to be a "property right" as you and your funders now wish to make it out to be.

    My "funders"? Hilarious. I notice that you again are not addressing anything McKenna says on the merits. His scholarship, as well as that of many others, goes into great detail about how you are exactly wrong. The original purpose was to protect producers from unfair competition. The idea that protecting consumers was an end unto itself is very much more modern. I've cited McKenna's paper, and I can cite others. Can you cite one single source to back up your claim?

    It's quite obvious that you haven't researched this, just as it's obvious that you have no intention of ever digging deeper. You think property = bad, and that's that. Of course, if you truly understood the property basis of IP, you'd know that it's far more limited and limiting. In fact, it suits your narrative of narrow IP far more than you realize. It's funny to watch you balk at it. The property view of trademark, as opposed to the consumer confusion, is actually far narrower.

    But to provide more cites, and I'm happy to provide them all day long, I'll point you to the Seventh Circuit in 1912:
    The only theory upon which the injunction in this case can be sustained is upon that known as unfair competition. Relief against unfair competition is granted solely upon the ground that one who has built up a good will and reputation for his goods or business is entitled to all of the resultant benefits. Good will or business popularity is property, and, like other property, will be protected against fraudulent invasion.

    The question to be determined in every case of unfair competition is whether or not, as a matter of fact, the name used by the defendant had come previously to indicate and designate the complainant's goods. Or, to put it in another way, whether the defendant, as a matter of fact, is, by his conduct, passing off his goods as the complainant's goods, or his business as the complainant's business.

    It has been said that the universal test question in cases of this class is whether the public is likely to be deceived as to the maker or seller of the goods. This, in our opinion, is not the fundamental question. The deception of the public naturally tends to injure the proprietor of a business by diverting his customers and depriving him of sales which otherwise he might have made. This, rather than the protection of the public against imposition, is the sound and true basis for the private remedy.
    Borden Ice Cream Co v. Borden's Condensed Milk Co, 201 F. 510, 513 (7th Cir. 1912)

    Not only does the appellate court say, over 100 years ago, that good will is "property," that notion is so well-settled that it requires no explanation. Of course it's property. But note also that the court explains how deception, i.e., consumer confusion, is relevant because it injures the producer. This is why, in case you might not notice, the producer has a cause of action. And the court explicitly says that the "sound and true basis" is to protect the producer, not "protection of the public."

    Now, I've provided yet another source to show that protecting consumers was not the original purpose. What can you show to back up your claim that "it's designed to protect the producers, but FOR THE PURPOSE of not deceiving consumers"? You would seem, as my cite again shows, to have it backwards.

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