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Louis Vuitton’s Opposition To Trademark For Gardening Tools Fails Spectacularly

from the fail-fail-fail dept

Every once in a while you get a trademark bullying story that meets a just and proper end. Almost a year ago, we discussed how Louis Vuitton, famous maker of luxury fashion products and infamous trademark bully, did its bullying thing when it opposed the trademark application for a company in the UK called L V Bespoke. Louis Vuitton asserted that only it could use the letters “L” and “V” in its branding and further alleged that, because it uses those letters on metal affixed to its luxury items, it was further problematic in this case because L V Bespoke also makes things with metal. Lost in all of that was the simple fact that L V Bespoke makes gardening products and that the metal it works with are gardening support stakes. If you don’t believe this whole thing was really that stupid, go read the post. It was.

But Louis Vuitton is big and L V Bespoke is a tiny company without the legal warchest to match its interlocutor. The founders of the company, from which it derives its “L V” name, are Lawrence and Victoria Osborne and it would have been extremely easy for the two to cave to the fashion giant’s demands and either rebrand the company or close up shop. Fortunately, that didn’t happen and the UKIPO has sided with L V Bespoke and has granted it the mark.

“It’s a great way to start the new year and we can finally wholeheartedly embrace the branding of our business. To not have the worry of having to rebrand or rescope our business is a huge relief. We’ve had the handbrake on our business for the last six months awaiting this decision, so it’s been a long time coming,” said Victoria.

This is obviously the right decision, but we also shouldn’t allow the fact that this went on for months and months to go without more than a mere shrug of our shoulders. Louis Vuitton absolutely knew, or should have known, that this opposition was made without even a hint of merit. It bullied this small company because it could. I can’t think of another explanation for the opposition. And that opposition took a very real toll on Lawrence, Victoria, and their business.

“It’s been challenging both mentally and financially. Mentally it’s been hugely challenging for us as a family not knowing whether or not we can continue to grow our business with the presence and identity that we already have,” she said.

“Everything has come as a huge relief and I hope the next six months aren’t as challenging as what the last have been awaiting this decision so we can finally move forward,” she continued.

And to be clear, it wasn’t just emotionally taxing, having to fight this nonsense. The business had to spend the dollar-equivalent of nearly 20,000tocombattheopposition,whilethefinaldecisionintheoutcomeonlyrequiresLouisVuittontoreimburseLVBespokeaquarterofthatincosts.Inotherwords,asmallbusinesshadtospendtheequivalentofnearly20,000 to combat the opposition, while the final decision in the outcome only requires Louis Vuitton to reimburse L V Bespoke a quarter of that in costs. In other words, a small business had to spend the equivalent of nearly 20,000tocombattheopposition,whilethefinaldecisionintheoutcomeonlyrequiresLouisVuittontoreimburseLVBespokeaquarterofthatincosts.Inotherwords,asmallbusinesshadtospendtheequivalentofnearly15,000 out of pocket merely because one of the largest and wealthiest luxury designer brands on the planet decided to make nonsensical trouble.

That’s pretty shitty and draws the obvious point: there needs to be more punishment for filing absolutely senseless trademark oppositions such as this.

Filed Under: gardening tools, likelihood of confusion, trademark
Companies: l v bespoke, louis vuitton

Louis Vuitton Opposes Trademark Application For Small Family Business Selling Gardening Tools

from the why? dept

If you go back and read nearly all of the posts we’ve done on luxury fashion company Louis Vuitton, you’ll see a history of a company that is about as big a pain in the ass when it comes to intellectual property bullying as you’ll find. The company often times takes it’s “protecting” of it’s IP rights, particularly trademark rights, to ridiculous extremes.

But I have to say the company’s opposition to the trademark registration for a gardening tools company had me double-checking to make sure it wasn’t parody.

The Norfolk-based company, L V Bespoke, was started by couple Lawrence and Victoria Osborne after their construction business was shut down during the COVID-19 pandemic. They sell plants, steel plant supports and a variety of handmade home and garden items. The fashion powerhouse, which owns its iconic interlocking “L” and “V” trademark, is opposing L V Bespoke’s application to register their name as a UK trademark at a hearing on Monday, The Eastern Daily Press reported.

“Louis Vuitton say they have superior rights to use the initials ‘L V’,” Victoria Osborne told the paper. “They have also raised concerns over our handcrafted metalwork products because they use metal for their ‘L V’ symbols on their handbags.”

If you’re not laughing at this point, you should be. The manner in which L V Bespoke is using those two letters, which come from the founders’ initials as it happens, is not infringing on Louis Vuitton’s trademarks for any number of reasons.

For starters, they operate in entirely different markets, no matter Louis Vuitton’s ham-fisted attempt to conflate its use of metal on handbags with — double-checks notes — plant poles for the garden. Add to that the fact that the trademark applied for is not just “L V”, but “L V Bespoke.” When taken in total, that term doesn’t bring to mind the fashion brand.

The Osbornes, who have already spent “tens of thousands of pounds” during the dispute, argued that Louis Vuitton can not claim exclusive rights to the letters “L” and “V.”

“Some of the things raised at the hearing were laughable and eyebrow-raising,” Victoria Osborne said.

That they’ve put up this much of a fight so far is impressive. However, the Osborne’s have also indicated that the business doesn’t have the money to fight beyond this. So either the UKIPO will be sensible, or L V Bespoke will need to operate without its trademark.

Filed Under: gardening tools, l v, likelihood of confusion, trademark, ukipo
Companies: l v bespoke, louis vuitton

Pooey Puitton Proactively Sues The Shit Out Of Louis Vuitton

from the doo-doo dept

All one needs to do to get a sense of how Louis Vuitton, famed maker of bags, views trademark law is do a short review of past stories it’s been involved in on this site. What you will come away with is the clear sense of the company as laughably litigious, insanely aggressive in bullying others, and as being entirely devoid of having anything resembling a sense of humor or respect for parody.

And that last bit appears to be resulting in yet another dispute, this time between Louis Vuitton and MGA Entertainment Inc., which makes the Pooey Puitton toy handbag. And, yes, that toy handbag is literally shaped like a piece of poop. Apparently, Louis Vuitton has been making comments to some of MGA’s commercial clients that the toy handbag infringes its trademarks, leading to MGA filing suit against LV asking for a declaratory judgement that its parody bag is not in fact infringing.

In a complaint filed on Friday in Los Angeles federal court, MGA Entertainment Inc said no reasonable consumer would mistake Pooey Puitton, which retails for $59.99, for costlier Louis Vuitton handbags.

“The use of the Pooey name and Pooey product in association with a product line of ‘magical unicorn poop’ is intended to criticize or comment upon the rich and famous, the Louis Vuitton name, the LV marks, and on their conspicuous consumption.”

All of which puts the Pooey Puitton bag squarely in the category of protected parody. Beyond that, any claim that the public is going to look at the bag as anything other than a joke played on upon LV, rather than having association with the company, is pretty laughable.

But my interest is centered around LV’s apparent thinking that anyone is going to mistake a literal piece-of-shit handbag, and think that it was made by Louis Vuitton. That doesn’t seem to me to be the kind of claim a luxury handbag maker would want to make, yet here we sit. Or, more likely, the Louis Vuitton folks simply can’t help themselves from failing to appreciate the joke and instead have to go the bullying route.

Filed Under: likelihood of confusion, pooey puitton, trademark
Companies: louis vuitton, mga entertainment

Louis Vuitton's Inability To Take A Joke Opens Up A Chance To Fix Our Broken Trademark Laws

from the my-other-bag-has-law-professors dept

As you may recall, earlier this year we wrote about a good ruling in a ridiculous lawsuit by the notoriously overaggressive trademark enforcers at luxury goods giant Louis Vuitton. You can look back at some of their earlier lawsuits, but the one we wrote about this year was particularly ridiculous. It sued a small bag maker called “My Other Bag” who made a simple tote bag that played on the famous joke bumper sticker “My Other Car is A….” with some sort of luxury car brand listed as the final point. People would put those on not-nearly-as-nice cars. In fact, when I was a kid, my dad had a Ford Pinto (yes, the exploding kind) and it had “My Other Car is a Porsche” as a bumper sticker. It’s not a very funny joke (and I totally didn’t get it as a kid), but it’s a joke. And a fairly common one. So My Other Bag did the same thing with the following tote:

Got it? That’s a picture of a bag that looks like a Louis Vuitton bag on the side of a tote. It’s obviously a joke, and the district court made that point to LV:

Louis Vuitton is, by its own description, an ?active[] and aggressive[]? enforcer of its trademark rights…. In some cases, however, it is better to ?accept the implied compliment in [a] parody? and to smile or laugh than it is to sue….

The court later pointed out that the fact that LV doesn’t find the joke funny is immaterial.

For whatever reason, LV appealed this decision. And while one hopes that the appeals court will make quick work of the case and back the district court ruling, something interesting may be happening as well. A group of law professors has jumped into the case with a fascinating amicus brief, not just arguing in favor of My Other Bag, but actually making a constitutional argument that the very concept of dilution in trademark law is unconstitutional under the First Amendment.

A little background first: as we’ve noted many times over the years, the original intent of trademark law was not to be some form of “intellectual property” akin to patents or copyrights. Instead it was designed as a consumer protection statute, to protect individuals from buying Bob’s Cola thinking that it was really Coca Cola. That is, trademark isn’t about locking up some sort of “property right” as much as it’s a way to protect consumers from being fooled or tricked into buying a product that is not what it says it is. And yet, as the concept of “intellectual property” became a bigger and bigger thing, trademark lawyers kept repositioning trademark law as being just a third prong of the same kind of “intellectual property” as patents or copyrights.

A key part of this was inventing, basically out of thin air, the concept of “dilution.” Historically, in order to prove trademark infringement, you had to show “a likelihood of confusion” from consumers, fitting with the point above about how it’s for consumer protection. However, trademark lawyers found that way too constraining, and added this idea of “dilution,” which was a situation where you could be found to violate trademark law if you merely “diluted” the original mark, even if there were no likelihood of confusion. For years, we’ve pointed out what a bad idea this was, but Congress, always eager to do short-sighted things in support of expanding intellectual property concepts, allowed the concept of “dilution” to be added to trademark law.

Enter the amicus brief from a group of excellent law professors, led by Chris Sprigman and Rebecca Tushnet (both of whom have been mentioned here on Techdirt many times before). The brief was also signed by some other legal all-stars, including Pam Samuelson, Mark Lemley and Robert Brauneis (also mentioned here many times). They argue, first, that MOB isn’t causing any customer confusion. But then they also argue that the very concept of dilution itself is unconstitutional as a restriction on the First Amendment:

At the outset, it is important to recognize that the First Amendment landscape has changed substantially in recent years. This Court has ruled that content-based suppression of non-misleading speech, including non-misleading commercial speech, is presumptively unconstitutional and, to be upheld, must be shown to be narrowly tailored to serve compelling state interests….

[….]

Trademark law?s anti-dilution provision creates a content-based right that applies to non-misleading commercial speech. Unlike defamation, it is a right unknown to the Framers of the Constitution. It was developed in the early decades of the twentieth century, when truthful commercial speech received no constitutional protection. LV claims that dilution law allows it to prevent the creation of unauthorized new associations with its mark, which is to say, to prevent consumers from forming new opinions and beliefs even in the absence of deception. This is not just content-based suppression of speech, it is viewpoint-based suppression of speech ? the prime evil against which the First Amendment protects. Yet Congress provided no compelling interest to sustain its new restriction on non-misleading commercial speech when it enacted the federal dilution law, nor did it attempt to use the least restrictive means to achieve any such interest

In other words, there’s a big problem with the very concept of dilution in trademark law, and it’s about time someone did something about it.

Chances are this argument goes nowhere right now. Courts are (somewhat reasonably) loathe to take on constitutional issues when they can deal with a case directly on the law. And in this case, it seems fairly clear that My Other Bag’s totes are not confusing and not trademark infringing in the slightest. So it’s possible that the 2nd Circuit will avoid the constitutional issue altogether. But this is an issue that’s not going away. There’s been a pretty constant push to expand dilution law and lots of big companies regularly claim dilution to get around a lack of customer confusion in trademark lawsuits. That means that sooner or later a court is really going to have to address this issue, and it’s difficult to see how the dilution concept can pass First Amendment muster.

Filed Under: dilution, first amendment, jokes, trademark
Companies: louis vuitton, lvmh, my other bag

Louis Vuitton Loses Trademark Lawsuit Over Joke Bag; Judge Tells Company To Maybe Laugh A Little Rather Than Sue

from the get-a-sense-of-humor dept

When I was very little, my father drove a 1972 Ford Pinto (yes, one of the exploding versions) that had a faded bumper sticker reading “My other car is a Porsche.” I remember this very clearly because I remember, at a very young age, asking my father to explain the “joke” and still not really getting it. Of course, that “my other car is a…” joke has been around for a long time. It may not be a good joke, but it’s a pretty well-known joke. Except, apparently, for the overly serious trademark lawyers at Louis Vuitton.

We’ve covered Louis Vuitton’s ridiculous trademark bullying for years — including shutting down an art exhibit that commented on LV’s trademarks, suing an artist for calling attention to the situation in Darfur by painting a refugee child holding a bag that kinda, but not really, looked like an LV bag, and suing Hyundai for showing a basketball decorated decorated with the LV symbols in a commercial for 1 second (incredibly, LV won that lawsuit for reasons I still can’t understand). Yes, this brief image was “trademark infringement” according to the court:

And that’s not all. It used the victory over Hyundai to sue Warner Bros. because an LV bag appears briefly in the movie (thankfully, they lost that one). Oh, and then there was the time LV’s lawyers actually threatened UPenn’s law school for holding a trademark symposium with the following poster:

And that brings us to the latest case, spotted via The Trademark Blog, in which Louis Vuitton sued a small company called “My Other Bag” which made (you guessed it!) bags that play off the “my other car…” joke:

Thankfully, while Louis Vuitton’s lawyers didn’t get the joke, Judge Jesse Furman, totally got the joke, and thought that perhaps Louis Vuitton’s lawyers might want to loosen up a bit and enjoy the joke as well:

Louis Vuitton is, by its own description, an ?active[] and aggressive[]? enforcer of its trademark rights…. In some cases, however, it is better to ?accept the implied compliment in [a] parody? and to smile or laugh than it is to sue…. This ? like Haute Diggity Dog (and, arguably, Hyundai) ? is such a case. MOB?s use of Louis Vuitton?s marks in service of what is an obvious attempt at humor is not likely to cause confusion or the blurring of the distinctiveness of Louis Vuitton?s marks; if anything, it is likely only to reinforce and enhance the distinctiveness and notoriety of the famous brand. Accordingly, and for the reasons stated above, MOB is entitled to summary judgment on all of Louis Vuitton?s claims; it follows that Louis Vuitton?s own motion for partial summary judgment must be and is denied.

You’ll notice the mention of that nutty Hyundai ruling in this one. Here, the judge distinguished the case from the Hyundai one, noting that in this case, unlike the Hyundai case, the commentary is clearly about Louis Vuitton and its brand, making it clearly parodying the mark itself. However, the judge also adds a footnote that more or less says that he probably would have decided that case differently too:

Even if Hyundai were not distinguishable, this Court would decline to follow it. In the Court?s view, the Hyundai Court blurred the distinction between association and dilution. As discussed in more detail below, association is a necessary, but not sufficient, condition for a finding of dilution by blurring.

Either way, throughout the ruling you can see that the judge is mainly just frustrated that Louis Vuitton’s lawyers can’t just enjoy a joke. From the opening:

Louis Vuitton Malletier, S.A. (?Louis Vuitton?), the maker of Louis Vuitton bags, is perhaps unfamiliar with the ?my other car? trope. Or maybe it just cannot take a joke.

And, later, during the discussion on Hyundai, the judge again notes the lack of a sense of humor by LV’s lawyers:

…the fact that Louis Vuitton at least does not find the comparison funny is immaterial; Louis Vuitton?s sense of humor (or lack thereof) does not delineate the parameters of its rights (or MOB?s rights) under trademark law.

Either way, this is a good ruling, pushing back on yet another case of Louis Vuitton’s trademark bullying. One hopes that the company will take up the judge’s suggestion to maybe accept the compliment and laugh a little, but somehow that seems unlikely.

Filed Under: jokes, my other bag, my other car, parody, trademark
Companies: louis vuitton, lvmh, my other bag

Louis Vuitton Loses Bogus Trademark Lawsuit: Using Fake Handbag In Hangover II Isn't Infringement

from the get-over-it dept

Louis Vuitton is probably the biggest of the trademark bullies out there. We have a bunch of posts detailing some of Louis Vuitton’s overreach. Unfortunately, just a couple months ago, it actually won in one of its more bizarre claims — that a clearly fake basketball in a commercial damaged its trademark. LV used that win to support another ridiculous claim: that Warner Bros. using a counterfeit LV bag in its movie Hangover II itself represented trademark infringement.

Thankfully, as a number of folks have sent in, district court Judge Andrew Carter is not convinced and has dumped the case, noting (correctly) that “The likelihood of confusion is at best minimal.” The judge pointed out that the bag was on-screen for less than 30 seconds and no one was likely to notice it was fake. The fact that the character in the movie (played by Zach Galifianakis) made a joke in which he pronounced Louis Vuitton as “Lewis Vuitton” is meaningless here, even though LV seemed particularly hurt by being the butt of a joke, saying it was “an oft-repeated and hallmark quote from the movie.”

Now, if only we can get that ruling on the basketball overturned…

Filed Under: andrew carter, counterfeit, the hangover, zach galifianakis
Companies: louis vuitton, warner bros.

Who Needs SOPA When Courts Will Pretend SOPA Already Exists?

from the seems-unfortunate dept

Back in November, we wrote about one of a series of cases we had seen where trademark holders were going to court with a list of domain names that they insisted were selling counterfeit goods and getting the courts to issue injunctions that appeared to be quite similar to what SOPA would have allowed had it passed. That is, basically upon request, a trademark holder was able to get domain registrars to kill domain names, while forcing search engines and social networks to put in place blockades barring such sites from being listed. It appears that more trademark holders are taking notice. Jeff Roberts has the story of (regular IP extremist) Louis Vuitton trying the same thing.

Basically, it lists out a bunch of websites that may or may not be involved in the sale of infringing works. Most, if not all of them, are foreign run. However, it is seeking a full injunction against those sites, not just to get them to stop selling any counterfeit goods, but to get the domains themselves turned off, and to block search engines from being able to find them:

Entry of an order requiring the Subject Domain Names, and any other domain names being used by Defendants to engage in the business of marketing, offering to sell and/or selling goods bearing counterfeits and infringements of the Louis Vuitton Marks to be disabled and/or immediately transferred by Defendants, their Registrars and/or the Registries to Louis Vuitton’s control so they may no longer be used for illegal purposes.

Entry of an Order that, upon Louis Vuitton’s request, the top level domain (TLD) Registries for the Subject Domain Names and their administrators place the Subject Domain Names on Registry Hold status, thus removing them from the TLD zone files maintained by the Registries which link the Subject Domain Names to the IP addresses where the associated websites are hosted.

Entry of an Order that, upon Louis Vuitton’s request, those in privity with Defendants and those with notice of the injunction, including any Internet search engines, Web hosts, domain-name registrars and domain-name registries or their administrators that are provided with notice of the injunction, cease facilitating access to any or all domain names and websites through which Defendants engage in the sale of counterfeit and infringing goods using the Louis Vuitton Marks.

Entry of an order that, upon Louis Vuitton’s request, the Internet Corporation for Assigned Names and Numbers (“ICANN”) shall take all actions necessary to ensure that the Registrars and the top level domain Registries or their administrators responsible for the Subject Domain Names transfer, change the Registrar of Record, and/or disable the Subject Domain Names as directed by the Court.

As we noted back in the fall, there are all sorts of problems with these kinds of rulings (assuming that the South Florida court in this case follows the lead of previous courts). First of all, it’s not clear under what authority the courts can issue such broad injunctions. Second, there are serious jurisdictional questions. But the biggest issue of all is that the court seems to be requiring non-parties to the litigation to take pretty drastic action: requiring search engines and domain registrars to effectively kill sites with little in the way of review or recourse. Now, it’s likely that most — or perhaps all — of the sites in question are selling counterfeit goods. But how long do you think it will be until others use these cases as precedent for taking down all sorts of sites — even those that are perfectly legitimate?

Filed Under: sopa, trademark
Companies: louis vuitton

Louis Vuitton Touts Basketball Trademark Victory In Similar Lawsuit Against Warner Bros.

from the trademark-hangover dept

We recently wrote about the terrible ruling in which a district court said Hyundai had diluted Louis Vuitton’s trademarks with a one-second clip of a mock LV basketball in a commercial. Now THR reports that Louis Vuitton has included that ruling as part of a new filing in another ongoing trademark suit against Warner Bros., over a scene in The Hangover Part II that briefly shows (and refers to) a Louis Vuitton bag. Warner Bros. is seeking summary judgement in that case, on the quite sensible grounds that featuring trademarks and brands in a film is protected speech under the First Amendment, but Louis Vuitton is using the Hyundai ruling as a counterweapon:

The French brand says that judge’s decision two weeks ago shows why it should be able to go forward with its claims against Warner Bros. for infringing and diluting its trademark by showing, for one brief moment in the movie, Zach Galifianakis telling someone who pushes his bag, “Be careful, that is … that is a Lewis Vuitton.”

…

“As Judge Castel recently ruled in Louis Vuitton v. Hyundai, Louis Vuitton’s ‘aggressive’ enforcement of its trademark rights and prompt action against those who misuse its trademarks are necessary concomitants of its exclusive rights in the brand,” the French company says in a court filing.

This is how a law gets out of hand: each bad ruling diminishes its intent a little further, until it no longer serves its original purpose. This is a big part of what happened to copyright law, and bullies like Louis Vuitton are causing a similar erosion of trademark: a shift from laws that benefit everyone to laws that grant broad powers of ownership and control to rightsholders, infringing on freedom of speech in the process. Of course, Warner Bros. has been through something similar before, when the artist behind Mike Tyson’s face tattoo sued over the very same movie—though that was a copyright issue, and settled confidentially. The argument against trademark dilution is likely even stronger than the argument against copyright infringement, but it remains to be seen how Warner Bros. will respond to Louis Vuitton’s latest move.

Of course, as always, one can’t ignore the irony of Warner Bros.—a big proponent of stronger intellectual property laws—fighting against overly restrictive trademarks, and citing the First Amendment in the process. This hypocrisy is something media companies don’t want to acknowledge: as content producers and distributors, they rely on the very freedoms and fair use exceptions that they are constantly seeking to curtail.

Filed Under: bad ruling, free speech, the hangover
Companies: hyundai, louis vuitton, warner bros.

Ridiculous: Court Says Mock Basketball Which Appears In Hyundia Commercial For 1 Second 'Dilutes' LV Trademark

from the are-they-insane? dept

A little over two years ago, we wrote about what we considered to be an absolutely insane lawsuit from Louis Vuitton, arguing that a mock basketball, which appeared in a Hyundai commercial for one second violated LV’s trademark. You can see the commercial below:

If you missed it (entirely possible), at the 3 second mark, this image flashes briefly:

The point of the commercial is to get people to imagine what life would be like if “luxury” items were everyday items, and thus the mock basketball with symbols designed to suggest a luxury bag, like a Louis Vuitton bag. As we (and many, many trademark experts) suggested when the lawsuit was filed, the claims here are simply crazy. There is simply no harm whatsoever done to Louis Vuitton by this ad. Most people wouldn’t even notice the markings and if they did, what possible “harm” would it do? The answer is none. There is no consumer confusion whatsoever. There are no LV basketballs that won’t be sold because of this (in fact, the judge in this case notes that, after seeing this commercial, some people wanted one — which would suggest a market opportunity, rather than litigation).

Of course, Louis Vuitton’s complaint didn’t rest on the bedrock of trademark law — the likelihood of confusion — but a more modern bastardization of trademark law called “dilution.” The concept of dilution in trademark law is an affront to the purpose of trademark law, which is supposed to be about protecting consumers from confusion. That is, it’s supposed to be about preventing someone from buying Bob’s Cola, thinking that it’s really Coca-Cola. But there’s no such risk here. Dilution, however, flips the very concept of trademark law on its head and pretends (falsely) that trademark law is about protecting a company’s trademarks from anyone doing anything at all with it that the company doesn’t like.

Unfortunately, the courts don’t always get things right — which is why we get such ridiculous lawsuits in the first place — and here, amazingly, the district court has sided with Louis Vuitton in its dilution argument, granting summary judgment on Hyundia’s liability for dilution, while it rejected Hyundai’s movement for summary judgment rejecting all of Louis Vuitton’s claims. This is, in many ways, horrifying.

Eric Goldman’s summary, linked above, highlights the many problems with the ruling — while cautioning that the details suggest this type of ruling is limited. Still, as he notes:

And then we have an opinion like this–where the court finds trademark dilution without finding infringement (not resolved yet) and in a situation where EVERYONE can immediately tell there was zero harm to the brand owner. Rulings like this make trademark academics shudder in fear that trademark dilution will swallow up all of trademark law and confer rights-in-gross to trademark owners. While I don’t share those fears for reasons I’ll explain in a bit, unquestionably this is a bad ruling.

Goldman goes on to highlight some of the more specific problems with the ruling, but the key point is simply that there is no harm here. None. Absolutely none. Perhaps less than none, given the reports of interest in LV basketballs. When the law doesn’t care about that, then the law is, unquestionably, broken. A ruling like this automatically lessens respect for trademark law, because it makes no sense at all. It makes a mockery of the judicial system by suggesting that lawsuits like this have any merit whatsoever.

Filed Under: basketball, commercial, dilution, eric goldman
Companies: hyundai, louis vuitton

Louis Vuitton's International Tour Of Trademark Bullying Runs Smack Dab Into UPenn Law School Who Explains Trademark Law In Return

from the a-little-lesson-for-you dept

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.

Filed Under: fashion, law school, symposiu, trademark, upenn
Companies: louis vuitton