For some time, this blog has been following a lawsuit by luxury goods brand Louis Vuitton; the defendant is the maker of canvas totebags embellished with cartoon drawings of high-end handbags, including Louis Vuitton, accompanied by the text “My Other Bag….”.  A district court dismissed the company’s copyright and trademark claims back in 2016 on grounds that the alleged infringer’s use of Louis Vuitton’s distinctive logo was fair use; in 2017, the Second Circuit affirmed that ruling.  Louis Vuitton pressed on, seeking a rehearing by the Second Circuit en banc, which was denied, and petitioning the Supreme Court for a writ of certiorari, also denied.  See Docket No. 16-241 (2d Cir.). 
 
Having finally prevailed, the defendant, My Other Bag, Inc. (“MOB”), filed a motion back in district court seeking its attorneys’ fees and costs, under sections of the federal trademark and copyright statutes that allow for such an award.  The district court, however, declined to award fees and costs.  See Docket No. 14-cv-03419 (S.D.N.Y.).
 
In a decision issued January 8, the court noted that the Lanham Act provides that a court “in exceptional cases may award reasonable attorney fees to the prevailing party.” 15 U.S.C. § 1117(a).  But it held that this was not an exceptional case, concluding that “although the Court (and, by all appearances, the Second Circuit) did not find this case to be a particularly close call, it cannot say that Louis Vuitton’s arguments were so objectively unreasonable (as either a legal or factual matter)” as to warrant a fee award.  It also held that the plaintiff had not litigated the case in an exceptionally vexatious manner.  The court acknowledged that Louis Vuitton aggressively defends its trademarks and has even been called a “trademark bully,” but also noted that “the law compels trademark owners to police their marks or risk losing their rights,” and that there was no concrete evidence “that Louis Vuitton was solely, or even primarily, motivated in this case by an improper desire to chill parody or stamp out a smaller competitor.”
 
Likewise, the court held that a fee award under the Copyright Act was not warranted.  While a court may “award a reasonable attorney’s fee to the prevailing party” in a copyright action, see 17 U.S.C. § 505, such awards are not “automatic” or granted as “a matter of course,” but rather are committed to the discretion of the court; they may be appropriate when they are consistent with the goals of copyright law (such as ensuring the public’s access to creative works, rewarding authors’ creations, and enabling others to build on existing work), but courts should look at factors such as frivolousness, motivation, unreasonableness, and the need for compensation and deterrence.  Here, the court held, the “fact that MOB’s works were clear parodies of Louis Vuitton’s works was not dispositive”; rather, parodies, like other uses of copyrighted works, must be judged case by case in light of the statutory fair use factors.  And here, the court could not “say that Louis Vuitton’s arguments were frivolous or baseless, let alone that the company itself believed them to be so.” 
 
This case reminds us that, even when it comes to parodies, fair use litigation is rarely a cut-and-dried slam-dunk.  It’s true that a court may, on occasion, dispose of a case on fair use grounds at the motion to dismiss stage—we saw this in one recent court decision holding that a parody of a classic children’s book was fair use (for more details, see our blog post on that case here).  But often, courts are reluctant to resolve fair use questions without the benefit of discovery, meaning that litigants in fair use cases may be in for a lengthy and costly court battle before the matter is resolved (as an example, see our recent post about a case involving Richard Prince works).  And even when a use is clearly a parody, there is no outright “presumption” in favor of fair use for parodies; courts must still analyze the use with regard to the factors laid out in the Copyright Act, and where a litigant can make colorable arguments, the counterparty may still need to defend itself—sometimes at considerable expense—and may not be able to recover its costs and attorneys’ fees even if it emerges victorious.  Thus, the economics of litigating or settling copyright claims can add a complicating dynamic to the already complex doctrine of fair use.