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: , , , ,
Companies: louis vuitton

Rate this comment as insightful
Rate this comment as funny
You have rated this comment as insightful
You have rated this comment as funny
Flag this comment as abusive/trolling/spam
You have flagged this comment
The first word has already been claimed
The last word has already been claimed
Insightful Lightbulb icon Funny Laughing icon Abusive/trolling/spam Flag icon Insightful badge Lightbulb icon Funny badge Laughing icon Comments icon

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

Subscribe: RSS Leave a comment
62 Comments
David Muir (profile) says:

"We'll absolutely cease and desist. Yes, sir."

Communications people: “no comment” sounds like a cop-out, but it is far better than committing your organization to a course of action. The peons in a company are usually advised to direct all questions from the public and press to the communications officer. I would think that similar advice would be given to the communications officer: If you get a financial inquiry, direct it to the accountants. If you get a legal inquiry, direct it to the lawyers.

Machin Shin (profile) says:

Bad Lawyering for LV

I guess to be a troll you just have to have more greed than brains. Of course it is funny to watch someone do something so very stupid.

If you plan on going after a law school you better make sure your case is rock solid with no possible flaws. I mean what do you think the law students were given for their next project?

“Today class we have a very exciting project for you. Your assignment is to look over this case and research any precedents that are related too it. Then write up a report on why this is not infringement.”

Anonymous Coward says:

Uggh, copyright for fashion design?

The story about LV isn’t surprising and is a bit amusing. I am disturbed, however, that the second panel of that conference is about “Copyright for Fashion Design”. If I am not mistaken, up to now, in the US, fashion designs haven’t been eligible for copyright, since clothes are considered to be utilitarian articles. And somehow, the fashion industry has managed to thrive without this.

Why on the earth would someone consider changing copyright law so that fashion designs would be covered, if there is no compelling reason to do so?

urza9814 says:

Uggh, copyright for fashion design?

There was a talk at my university (Penn State) not too long ago that discussed copyright and fasion. The conclusion was exactly what you said — they don’t need it. The talk also went into why copyright on fashion design would be a terrible thing for the industry. It was basically ‘Some people WANT copyright for fashion design, but those people are stupid.’ Just because they’re discussing it doesn’t mean they support it.

Sinan Unur (profile) says:

Encourage them ;-)

Actually, I would have liked you to encourage LV on their crusade and have them send a team of lawyers in person to try to shut down the conference. Now, that would have been entertaining.

All is not lost though … You can still say you’ve seen the light and LV must send its armies to the conference.

Shopping for popcorn in eager anticipation.

Anonymous Anonymous Coward says:

Re:

This sounds like a great idea, until you consider that it might remove the “PIPG has to be using a trademark in interstate commerce” defense. I am not sure that even if all the proceeds went to a non profit organization (as they already are) would save that defense if they sold one in, say Maryland or New York state.

Berenerd (profile) says:

"We'll absolutely cease and desist. Yes, sir."

I am almost certain that it was either a student who couldn’t speak for the school anyhow and this lawyer knew it and was grasping at straws to add to the bully train or the person stated that they would inform the group of the complaint and that he was certain that they had no intent on infringing on anyone’s Copy protections.

Anonymous Coward says:

LV’s concerns were quite reasonable. The letter it used to express its concerns was not.

Penn’s concerns were quite reasonable. The letter it used to express its concerns was not.

The first was written by an attorney who appears insensitive to dealing with others by falling back on legal lingo.

The second was written by an attorney who appears insensitive to dealing with letters such as the one it received.

Bear in mind that stripped of all its legal jargon, the point being raised by LV concerns trademark dilution (and that its use in the manner it was used for advertising an upcoming CLE presentation, which can suggest LV sponsorship), and not trademark infringement. Unfortunately, it presented the issue in a ham fisted manner, which in part was its undoing because it left itself wide open for a snarky rejoinder.

If one wants to harden opposite positions, both of these letters are crafted to accomplish such a goal. This situation is not one that I would held out as professional exchanges.

Anonymous Coward says:

Whip out the clue bat! But...

A severe beating about the head and shoulders with a clue bat rarely has any effect on someone who wears hi-tech armor made of dozens of laminations of wealth, lawyers, arrogance and greed, with a generous dollop self-entitlement added to hold the whole construction together. Assuming a successful outcome from the perspective of clue bat wielders around the world, will this case have a deterrent effect against future transgressions by the armor-wearing perpetrator, or will it become just another instance of winning the battle, but not affecting the course of the war?

MPHinPgh (profile) says:

Re:

I, too, immediately thought that this might have been “associated” with LV. But then, a split second later I noticed the TM (rather than LV) monogram, and the copyright symbol. Noticing that, I read most of the text on the poster and realized that the creator of the artwork had parodied the LV “pattern”.

Apparently you skipped everything after “But then”. Go back, look at the poster again, and I think you’ll come to the same conslusion that I did; the artwork is a parody that effectively illustrates the very topics to be addressed, as further idicated by the TEXT in the poster.

Avatar28 (profile) says:

Uggh, copyright for fashion design?

Here’s some absolutely terrifying thought about fashion design copyright. Think what the movie and video industries have done when someone has their IP in a YouTube video; they freak out completely. How long do you suppose before the first DMCA takedown occurs because someone was wearing some designer outfit or other. Pretty soon you will only be able to upload a YouTube video where the people are either naked or wearing some generic outfit. Now, I don’t know about you but while there are certainly some people I wouldn’t mind seeing naked the vast majority of them I definitely do NOT want to see that way.

Also, shrinkwrap licenses:

By wearing this article of clothing you are agreeing to a limited, non-transferrable license to display (wear) the enclosed item. This clothing may only be worn by the individual to which it was first licensed and may not be transferred to anywhere else. This license is only valid for a period of two years from the date of purchase. At the expiration of the license you may purchase an extension for $29.99 per year to a maximum of four years from date of purchase. If you elect not to renew the license or have reached the maximum display period then the clothing must be destroyed by burning or returned to us for recycling.

Anonymous Coward says:

Whip out the clue bat! But...

“A severe beating about the head and shoulders with a clue bat rarely has any effect on someone who wears hi-tech armor made of dozens of laminations of wealth, lawyers, arrogance and greed, with a generous dollop self-entitlement added to hold the whole construction together.”

And this is PRECISELY why the Streisand effect was created.

TtfnJohn (profile) says:

Uggh, copyright for fashion design?

While I’m firmly of the opinion that copyright both isn’t needed and isn’t appropriate for fashion design.

One of the reasons is that there is no bigger collection of copycats I can think of than fashion designers who steal..ahhhh..are “inspired” by street trends which they then use for their own designs,

In fact I can’t think of anything funnier than I saw that Stumble Upon led me to where certain members of the high fashion industry including Tommy Hilfiger and Karl Lagerfeld (sp?) taking credit for grunge as a broad fashion movement after they stole it from the followers of grunge music.

Keep in mind though that one of the set goals of ACTA, if I remember correctly, was to get copyright extended to fashion design. Not that it seems to have happened but you can bet they won’t stop trying.

David Muir (profile) says:

"We'll absolutely cease and desist. Yes, sir."

You don’t need to guess and feel almost certain. Read the Penn letter. It was “Steven Barnes, the Associate Dean for Communications at the Law School”.

But it’s true that the LV lawyer was likely bullying (as the tone of their letter suggests) when he extracted a promise of compliance from Mr. Barnes.

Anonymous Coward says:

My best guess is U. Penn. was “trolling” LV and they bit. Suckers… In a sense, U. Penn. gets free promotion for the U. Penn. conference courtesy of LV’s lawyers.

Almost surely, the LV lawyer is bullying. But hey, its billable hours. For-hire lawyers are essentially hired guns. This is how they “put food on the table” (and make luxury car payments).

Anonymous Coward says:

Re:

I don’t see parody, as much as an attempt to get exactly the type of coverage they are getting here. Basically, it cuts both ways, and while LV certainly doesn’t look good for their hardline approach, they would still have a fairly decent case here, because the parody is somewhat clouded by their intent.

Is it really parody, or an attempt to trade on the look and feel of LV, and to give at least the impression that LV might be part of it? I had to ask the question in my mind if this was being run or sponsored by LV in some manner.

It’s not so clear cut, parody would make it easily clear that it is in fact parody. I’m not getting that here.

Add Your Comment

Your email address will not be published.

Have a Techdirt Account? Sign in now. Want one? Register here

Comment Options:

Make this the or (get credits or sign in to see balance) what's this?

What's this?

Techdirt community members with Techdirt Credits can spotlight a comment as either the "First Word" or "Last Word" on a particular comment thread. Credits can be purchased at the Techdirt Insider Shop »

Follow Techdirt

Techdirt Daily Newsletter

Techdirt Deals
Techdirt Insider Discord
The latest chatter on the Techdirt Insider Discord channel...
Loading...