You’ve got to admire Louis Vuitton. They aggressively pursue alleged infringers of their trademarks.
There’s the recent case of Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936 (9th Cir. 2011) in which the Ninth Circuit held that a web-hosting company was liable for contributory copyright and trademark infringement when it failed to take steps to stop alleged infringement committed by Chinese websites which had used its servers.
There was Louis Vuitton Malletier, S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, in which the House of Louis sued a company that sold a parody pet product called Chewy Vuitton: a chew toy that resembled a Louis Vuitton handbag. (The Fourth Circuit ruled that the toy, which included a number of dissimilarities to the real bag, was a parody and thus did not infringe Louis Vuitton’s trademark.)
And the suit against Warner Brothers for its use of a counterfeit LV bag in “The Hangover Part II” (Zach Galifianakis warns his cohort not to sit on his Louis Vuitton bag, “Careful, that is a Louis Vuitton.”)
Now, LV has set its sights on the University of Pennsylvania Law School.
Penn Law included a version of the LV logo/design on a student flyer advertising a conference on intellectual property infringement in the fashion industry.
Specifically, the flyer showed those flowery, circley and diamondy shaped images that LV is known for. The flyer intermixed those images with some stylized ones to make a point about the discussion. They included circle-cs (for copyright) and TMs (for trademark). Get it?
Louis Vuitton’s director of civil enforcement for North America did, and he didn’t like it. He wrote to the law school’s dean, saying Louis Vuitton had “created the Toile Monogram pattern” (that’s what those clover and star things are called) “in the 1890’s to protect the Louis Vuitton brand from unlawful imitators.”
He was “dismayed” that the school’s Intellectual Property Group had “misappropriated and modified the LV Trademarks and Toile Monogram as the background for its invitation to [its] . . . Annual Symposium on ‘IP Issues in Fashion Law’”, calling such conduct “egregious” and predicting that it would dilute the LV Trademarks and could lead others to think that that it’s ok.
The coffee machine must work overtime at Louis Vuitton. They may want to consider laying off the caffeine.
The letter from LV’s counsel goes on to chastise the law school like a parent ripping into a kid for running across the street without looking first: “I would have thought the Penn Intellectual Property Group, and its faculty advisors, would understand the basics of intellectual property law and know better than to infringe and dilute the famous trademarks of fashion brands, including the LV Trademarks, for a symposium on fashion law.”
In my house we would have taken away the school’s treats for the day. I’m wondering if LV considered rejected this as being too harsh.
Perhaps I’m naively optimistic, but I just don’t think most people are going to confuse the law school’s use of the LV marks with LV’s participation in, sponsorship or support of the school’s program. After all, all the participants were listed on the flyer, and LV wasn’t one of them.
The University of Pennsylvania’s associate general counsel wrote back to LV. In his letter, he noted that the Lanham Act “expressly protects a noncommercial use of a mark and a parody from any claim for dilution” and that, in order to infringe LV’s marks, the school would have had to have used the marks in interstate commerce in a manner likely to cause confusion between “Louis Vuitton’s luxury apparel goods and [the student group's] educational conference among the relevant audience.”
He says he’s not going to tell the Intellectual Property Group to discontinue its use of the image, and invites LV’s counsel to attend the symposium.
I suppose LV’s counsel has reason to be concerned about fair use. It’s a good defense in some instances, such as when a mark is used in a descriptive sense. See e.g. Radio Channel Networks, Inc. v. Broadcast. Com, Inc. 1999 WL 124455 (S.D.N.Y. 1999), aff’d w/out opinion, 201 F.3d 432 (2d Cir. 1999) (use of term “radio channel” to label one of several website groupings of streaming programming held to be descriptive); see also Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150 (9th Cir. 2002) (defendant’s use of the plaintiff’s mark to describe the plaintiff’s product is acceptable); Playboy Ent., Inc. v. Welles, 279 F. 3d 796 (9th Cir. 2002) (use of plaintiff’s mark to identify defendant was not infringing).
Still, that doesn’t really fit this fact pattern.
Rather, this is closer to incidental use which is so de minimis that no infringement can be found, or better yet, how about the First Amendment? A trademark may develop into a cultural icon that becomes a referent for purposes of social commentary. See e.g. Mattel, Inc. v. MCA Records, Inc., 202 WL 1628504 at *2 (9th Cir. 2002) (“Trademarks often fill in gaps in our vocabulary and add a contemporary flavor to our expressions. Once imbued with such expressive value, the trademark becomes a word in our language and assumes a role outside the bounds of trademark law.”)
This is similar to the parody defense that school’s counsel mentioned. See Anheuser-Busch, Inc. v. Balducci Publications, 28 F. 3d 769, 773 (8th Cir. 1994) (use of a trademark to comment on or criticize the trademark, its owner, or the products and services marketed with the trademark may constitute a defense to an action for trademark infringement).
But the one I like best of all, is that there simply is no likelihood of confusion by the likely viewers (law students, IP lawyers, etc.) as to the source, sponsorship or affiliation with respect to the plaintiff’s mark and the defendant’s goods or services. See 15 U.S.C. Section 1114; Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358 (2d Cir. 1959); Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 205 (2d cir. 1979) (“The public’s belief that the mark’s owner sponsored or otherwise approved the use of the trademark satisfies the confusion requirement.”).
Is the use of those marks on a law school flyer for a Symposium on “IP Issues in Fashion Law” really going to dilute the LV trademarks?
To quote from that great bar scene in Star Wars, Episode IV (after Ponda Baba gives Luke a rough shove and starts yelling at him in an alien language Luke doesn’t understand):
Dr. Evazan (grabbing Luke) I don’t like you either. You just watch yourself. We’re wanted men. I have the death sentence on twelve systems.
Luke: I’ll be careful.
Dr. Evazan: You’ll be dead!
Obi-Wan: (intervening) This little one’s not worth the effort. Come, let me get you something.
(Dr. Evazan shoves Luke across the room and pulls out a blaster, at which point Obi-Wan ignites his light saber and severs Ponda Baba’s arm.)
This little one’s not worth the effort. LV should show up for the symposium and speak its mind. Beyond that, and knocking off the coffee, they should think twice before making an issue out of something like this . . . before they lose an arm and have no place to hang their bag.
Jonathan Pink is an intellectual property attorney at Bryan Cave, LLP. He is resident in the firm’s Los Angeles and Orange County (Irvine) offices. He can be reached at email@example.com or 949-223-7173.