steven proportionality: Louis Vuitton's International Tour Of Trademark Bullying Runs ...

Over the years, we?ve repeatedly identified Louis Vuitton as one of the biggest trademark bullies around. The company seeks to abuse trademark law to stifle free speech all the time. Anything involving any kind of parody of LV?s trademark seems to get a cease and desist. A few examples: LV sued Hyundai because of a silly commercial which (very, very briefly) shows a basketball with a design kinda like the LV monogram pattern in an ad joking about what a more ?luxury? world would look like. Even more troubling has been LV?s decisions to go after artists commenting on consumerist culture. There was the successful move to shut down an art exhibit by a student who made locust sculptures out of counterfeit LV bags. Then, famously, LV went hard after artist Nadia Plesner who made some t-shirts to benefit victims of the genocide in Darfur. She had made some t-shirts showing a young Darfur victim carrying a bag that had a similar (but not exact) pattern to LV?s bag pattern. In all of these cases, LV is clearly abusing both the intent and letter of trademark law to stifle commentary or parody, rather than any real confusion (or even dilution).

It?s latest attempt really picked on the wrong target. It seems that students at the University of Pennsylvania?s Law School were organizing their annual symposium on intellectual property issues in fashion and came up with the following invite/poster:

As you can probably see, the top section of the image is a somewhat clever parody of LV?s pattern, replacing segments with a stylized TM to match the stylized LV, and also a ? symbol. And?. LV freaks out. It sent a legal nastygram (pdf and embedded below) demanding the school and the student group cease-and-desist, arguing all sorts or ridiculousness, including arguing that this ?infringement? (it?s not) was ?willful? because as a law school and law students, they should know better (they do ? which is why they know it?s not infringing), and taking a particularly obnoxious scolding tone for someone so wrong:

This egregious action is not only a serious willful infringement and knowingly dilutes the LV Trademarks, but also may mislead others into thinking that this type of unlawful activity is somehow ?legal? or constitutes ?fair use? because the Penn Intellectual Property Group is sponsoring a seminar on fashion law and ?must be experts.? People seeing the invitation/poster may believe that Louis Vuitton either sponsored the seminar or was otherwise involved, and approved the misuse of its trademarks in this manner. 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.

The thing is, almost everything that LV?s lawyer argues above is wrong about the law ? and the ?experts? at UPenn are right that this in no way infringes. Unfortunately, somehow LV?s lawyer was able to first get a ?communications? guy from the school on the phone who (without understanding any of this) agreed to back down and promised that the poster wouldn?t be used. Thankfully, then the lawyers stepped up and said, ?no way.? A lawyer representing the school responded to LV?s lawyer with a little lesson in trademark law (pdf and embedded below). Here?s a snippet:

You assert that the clever artwork parody that appears on the poster and invitation is a ?serious willful infringement.? However, to constitute trademark infringement under the Lanham Act, PIPG has to be using a trademark in interstate commerce, which is substantially similar to Louis Vuitton?s mark(s), and which is likely to cause confusion between Louis Vuitton?s luxury apparel goods and PIPG?s educational conference among the relevant audience. First, I don?t believe that PIPG?s artwork parody was adopted as, or is being used as, a trademark to identify any goods and services. It is artwork on a poster to supplement text, designed to evoke some of the very issues to be discussed at the conference, including the importance of intellectual property rights to fashion companies?. Second, although you don?t cite the actual federal trademark registration that you assert protect your marks, I doubt any of them are registered in Class 41 to cover educational symposia in intellectual property law issues. There is no substantial similarity between the goods identified by Louis Vuitton?s marks and the PIPG educational symposium. Third, there is no likelihood of confusion possible here. The lawyers, law students, and fashion industry executives who will attend the symposium certainly are unlikely to think that Louis Vuitton is organizing the conference; the poster clearly says that PIPG has organized the event, with support from Penn Law and a number of nationally-known law firms. The artwork on the poster and invitation does not constitute trademark infringement.

You also state that PIPG?s use of its artwork parody knowingly dilutes the Louis Vuitton trademarks. I disagree. First, PIPG has not commenced use of the artwork as a mark or trade name, which is a prerequisite for any liability under 15 U.S.C. 1125(c)(1). More importantly, however, even if PIPG has used the artwork as a mark, there is an explicit exception to any liability for dilution by blurring or dilution by tarnishment for ?any noncommercial use of a mark.? 15 U.S.S. 1125(c)(3)(c). A law student group at a non-profit university promoting its annual educational symposium is a noncommercial use. Lastly, the artwork is clearly fair use?.

There?s a bit more in the response letter, including UPenn?s lawyer inviting LV?s lawyer to attend the event, and asking him to introduce himself. One would hope that LV?s counsel will have the good sense to let this matter drop, but it would be kind of fun to see LV get smacked down in court for yet another case of trademark bullying.

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