Louis Vuitton vs Pooey Puitton: A sticky situation for commercial trade mark parodies

Dr Sabine Jacques (University of Liverpool), 8 May 2024

Poopsie’s Pooey Puitton. Source: https://fivelittledoves.com/reviews/poopsie-pooey-puitton-review/

Whether one can use a trade mark for humorous purpose is a contentious issue. In a recent decision by the Paris Tribunal of First Instance, the tribunal decided that the toy company MGA Entertainment did infringe Louis Vuitton’s trade mark exclusive rights by selling the Poopsie’s Pooey Puitton slime kit without securing Louis Vuitton’s approval first. Although this decision may be appealed, it is nevertheless significant as it signals a departure from previous decisions by the same tribunal and highlights the complexity of applying trade mark provisions to commercial humorous expressions as explained below.

In a decision dated 25 April 2024, the tribunal decided a case involving a plastic toy purse shaped like a poop emoji with large sparkly eyes. The purse featured a colourful, printed monogram reminiscent of Louis Vuitton’s trade mark patterns, particularly their collaboration with Japanese artist Takashi Murakami in 2003. Aimed at children, the toy purse contains glittery slime, also known as ‘unicorn poop’. Despite the defendant’s argument that the toy was a commentary on consumerism, the tribunal rejected this notion, reasoning that adults purchasing the toy might still associate it with Louis Vuitton.

In summary, this ruling comes as no surprise. It’s widely recognised that there’s currently no specific exception for parody in trade mark legislation. However, as trade marks increasingly hold cultural significance, it’s natural for people to want to utilise them in ways that reflect this cultural meaning beyond their commercial meaning. Originally, trade mark laws were primarily focused on protecting the commercial interests of trade mark owners, preventing competitors from using similar marks that could mislead consumers as to their origin. Over time, these laws evolved also to preserve the communicative and reputational functions of trade marks, which currently include preventing the reproduction of protected signs as symbols for the values they represent beyond strict commercial information.

Parodies are undoubtedly protected expressions under the right to freedom of speech. However, despite this protection, legal uncertainties persist regarding the extent to which trade marked symbols can be used in parodic contexts. Parodies may involve reproducing trade marks to comment on goods and services they are affixed to, or their rights-holders. But they may also reproduce trade marks in entirely different contexts to symbolise the values they represent (e.g. luxury lifestyle). Examining the legal precedents in this area reveals the unequivocal assertion of trade mark rights over parodic uses.

And yet, in 2021, we have a decision from the same tribunal of first instance playing a different tune. Here, the tribunal held, in a case dealing with a magazine publication parodying France Dimanche Magazine, a trade mark parody could be permitted provided there is sufficient distinction from the original and the use is solely for humorous purposes (TGI Paris, 29 October 2021, 20/00199). A year later, the French Supreme Court went further by recognising that a strong commitment to freedom of expression as a fundamental right required the expansion of the parody exception beyond copyright law. As such, raising a parody defense should be possible not only in copyright cases but also in relation to other private rights as deciding otherwise would violate the European Convention on Human Rights.

Similarly to developments elsewhere in the world, it’s unfortunate that the judiciary seems to grapple with the fundamentals of the trade mark system. In the Pooey Puitton case MGA isn’t utilising ‘Pooey Puitton’ as a trade mark, i.e. the mention of Pooey Puitton on the plastic purse is not to indicate the origin of the goods (it’s also worth noting that in the EU in 2018, MGA applied for a trade mark registration for Pooey Puitton unsuccessfully. MGA was nevertheless successful in registering Poopsie as a trade mark). This raises questions as to whether such usage should even fall within the material scope of trade mark legislation, given that it’s not serving as a source identifier for goods and services. Perhaps not.

This recent decision also calls to mind a US case, Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, where the defendants, a manufacturer of pet-related products, were selling chew toys featuring Louis Vuitton’s trade mark and copyright-protected works. By capitalising on the notion that one wouldn’t want an authentic Louis Vuitton bag to be chewed by a dog, the defendant avoided infringement findings, as Louis Vuitton failed to establish the existence of dilution, i.e. that the chew toys weaken the distinctive quality of or harm the well-known trade mark, Louis Vuitton.

Chewy Vuitton dog toys. Source: https://www.euronews.com/culture/2023/03/23/jack-daniels-takes-on-squeaky-dog-toy-maker-in-us-supreme-court-trademark-case

Readers of this blog may also remember the recent decision from the US Supreme Court regarding a squeaky toy mimicking Jack Daniel’s trade mark in a parody, known as Bad Spaniel. Once again, a broad interpretation of ‘use as a trade  mark’ won out, resulting in the ruling that the Bad Spaniel dog toy did indeed infringe upon Jack Daniel’s trade mark (See Laura Little’s excellent post here).

Jack Daniel’s vs Bad Spaniel. Source: https://www.scotusblog.com/2023/06/jack-daniels-wins-big-in-challenge-to-spoofing-bad-spaniels-dog-toy/

Striking a balance between trade mark rights and freedom of expression remains a challenge for courts worldwide. Interpretative guidance from the Court of Justice of the European Union is awaited in the European Union (see C-298/23, Inter IKEA Systems BV v. Vlaams Belang and others). However, reforming trade mark law better to protect the right to freedom of expression while safeguarding trademark owners’ rights from abuses may be the most viable solution.

In the meantime, parodies continue to present challenges for trade mark law, leaving it as sticky as unicorn glitter goo.

For more on this topic: The EU trade mark system’s lost sense of humour. by Sabine Jacques :: SSRN