The Right to Poke Fun

My Other Bag prints sketched images of iconic handbags onto canvas totes. The bags are brilliant, funny, and flattering.

Louis Vuitton sued My Other Bag for trademark infringement.[1] The courts ruled for My Other Bag.[2]

It’s incredibly hard to properly parody a trademark. For the joke to work, the image of the trademark being parodied has to be recognizable. But, if it’s too convincing, you’re infringing. As the Court of Appeals said, My Other Bag managed to convey “two simultaneous—and contradictory—messages: that it is the original, but also that it is not the original and is instead a parody.”[3]

A few years ago, Louis Vuitton sued Warner Brothers over a joke in a movie. The Hangover: Part II included a scene where a character was established as an uncool wannabe by showing him carrying a knockoff of a Louis Vuitton bag. Louis Vuitton lost that case, too.

If you own a famous trademark, it’s important to protect your rights, but it’s equally important to have a sense of humor so you can tell the difference between infringement and permissible parody.

In both the Warner Brothers and the My Other Bag cases, the viewer had to acknowledge that Louis Vuitton was a highly desirable, iconic, luxury brand and that the thing she was looking at wasn’t an actual Louis Vuitton. That’s the key to the distinction.

If Louis Vuitton had a sense of humor, it could avoid looking like a bully and get free favorable publicity. Sounds like a good outcome for everyone to me.

 

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[1] The suit also included a claim for copyright infringement. I’m not going to discuss that here, except to say that it was shot down by the court, too.

[2] The United States District Court for the Southern District of New York (Jesse M. Furman, Judge) granted My Other Bag a summary judgment on all claims on January 8, 2016. The United States Court of Appeals for the Second Circuit affirmed the judgment as to all claims on December 22, 2016.

[3] Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 503 (2d Cir. 1996) (quoting Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490, 495 (2d Cir. 1989)).

Photo copyright My Other Bag. Used with permission.

Mr. Tam Goes to Washington

Yesterday I was privileged and awed to attend oral argument in Simon Tam’s quest to register the trademark for his band, The Slants. Listening to great minds debate the First Amendment is powerful and inspiring in the way that few things are.

I arrived at 6:00 a.m. and was #2 in the line for attorneys admitted to the U.S. Supreme Court bar. Within minutes we were joined by three more attorneys who, unsurprisingly, were the attorneys for the Redskins.

Oral argument was spirited, probing, and intense. Justice Kagan asked Assistant Solicitor General Malcolm L. Stewart to explain why the statute prohibiting The Slants from getting a registration is not just flat out impermissible viewpoint discrimination. Justice Breyer pressed Mr. Stewart relentlessly to explain how the purpose of the trademark law is advanced by prohibiting registration of disparaging trademarks. Justice Ginsburg was troubled that the Trademark Office appeared to be so arbitrary, letting some disparaging trademarks to be registered, while denying others.

When Mr. Tam’s attorney took his turn, the Justices probed the upper limits of what should be granted a registration.

We can’t know how the Court will rule based the questions that were asked and how the argument went, but we can take heart that our rights and freedoms are a matter of utmost importance to the Court. If I were on the bench, I would strike down the “disparaging” clause as unconstitutional.

How would you rule?

First Amendment v. Trademark

Simon Tam named his band The Slants “to make a statement about racial and cultural issues”[1]. Now he’s the front man for the First Amendment before the United States Supreme Court with his first gig on January 18.

How’d that happen?

Mr. Tam’s application to register his trademark was rejected because it “consists [of] matter which may disparage” people.[2] That particular section of the Lanham Act doesn’t come up very often. Its most famous use to date was to de-register the Redskins trademarks.

Now Mr. Tam is fighting the Trademark Office and this law.

The First Amendment prohibits the government from regulating speech because of its content or the message conveyed. This isn’t like the government saying you can’t have a march because there’s already another group having a march in the same place that day. This is the government saying you can’t have a march because some people don’t like what you’re marching about.

That’s the very essence of the First Amendment. The government can’t stop us from speaking because it doesn’t like what we’re saying.

The courts recognize that invalidating the disparagement clause “may lead to wider registration of marks that offend vulnerable communities.” If the Supreme Court rules for Mr. Tam, the Redskins will also be allowed to register.

But, there’s no need to protect popular or harmless speech. It’s speech on the edge that needs protection “to ensure that we do not stifle public debate.”[3]

That’s why the “First Amendment [should protect] Mr. Tam’s speech . . ..”[4]

 

 

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Photo of Supreme Court building used under Creative Commons license: CC-BY-SA-3.0/Matt H. Wade.

[1] In re Simon Shiao Tam, at page 4

[2] 15 USC 1052, subsection (a), also know as Section 2(a) of the Lanham Act.

[3] Snyder v. Phelps, 562 U.S. 443, 461 (2011)

[4] In re Simon Shiao Tam, at page 50