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.

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Companies: hyundai, louis vuitton, warner bros.

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Comments on “Louis Vuitton Touts Basketball Trademark Victory In Similar Lawsuit Against Warner Bros.”

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Anonymous Coward says:

Re: So LV doesn't like free advertising?

“If LV prefers that filmmakers use aome other company’s products to be used to illustrate luxury, they might just find that the public stops associating them with luxury.”

Yes, and THAT is what will “dilute” their brand–not a few frames in a car commercial, or three seconds of some silly sequel.

Anonymoose Custard (profile) says:

… as content producers and distributors, they rely on the very freedoms and fair use exceptions that they are constantly seeking to curtail.

As sad as the eventuality would be, it would amuse me immensely if they succeeded in curtailing Fair Use. Watching their own ability to produce and distribute become curtailed to the point where they can no longer profit from their content would be hilarious.

Serves them right.

Anonymous Coward says:

Maybe we'll get lucky ...

… and *all* references to Louis Vitton (including, I suppose, these) will disappear from the online world entirely. Let’s make sure that they get eliminated from all social networking sites as well (‘You wouldn’t believe the great [redacted] handbag I bought. You can buy it at [redacted].’). Screen all the online sales outlets (legit and otherwise) and let’s make sure the valuable brand Louis Vitton itself doesn’t get tainted; we can do this by changing louisvitton.com to in the global dns structure.
Let us rejoice in watching the bullies making themselves extinct. Popcorn, anyone?

PlagueSD says:

Re: Maybe we'll get lucky ...

That’s a great idea. I fully support deleting all references on the internet for [redacted]. While we’re at it, can we add [redacted], [redacted], [redacted], and [redacted] to the list also?

Also, [redacted] makes the best popcorn. You can go to [redacted] as they have the best price for popcorn.

DogBreath says:

It's about time for Iowa to tax the piss out of Louis Vuitton

Iowa Department of Revenue shreds the Commerce Clause

March 08, 2012

If an Iowa Department of Revenue position on interstate income taxation stands, the limits set by Congress in 1959 on taxation of out-of-state corporations (PL 86-272) will become a dead letter. The Department is attempting to tax Jack Daniels — whose only connection to Iowa is the sale of liquor to the Iowa state wholesale liquor monopoly — based on the use of its trademarks in Iowa.

PL 86-272, enacted under the Constitutional authority given to Congress to regulate interstate commerce, prohibits states from taxing corporations whose only business in the state is the shipping of goods from out-of-state. The states are always trying to get around this, and Iowa gave itself a victory on this score when the Iowa Supreme Court ruled that KFC was taxable on royalties received from its Iowa franchisees even though KFC itself had no property, employees or operations in Iowa. Now the Department is turning this victory up to 11. From the Administrative Law Judge ruling in favor of the Department in an appeal by Jack Daniels Properties, Inc. and Southern Comfort Properties, Inc, members of the Brown-Forman group.

The department?s regulations are consistent with the supreme court?s interpretation of the statute. The regulations define ?intangible property located or having a situs in this state? to include intangible property that ?has become an integral part of some business activity occurring regularly in Iowa.? 701 IAC 52.1(1)(d), 52.1(4). The regulations expressly cite Geoffrey, which is the same case the department cited in the letters it sent to the protesters. The regulations go on to state that, if a corporation owns trademarks and trade names that are used in Iowa, a business situs for purpose of taxation may be present even though the corporation has no physical presence or other contact with Iowa.

It is, of course, impossible for anybody who sells anything in Iowa other than generic products to avoid having “trademarks and trade names that are used in Iowa.” As long as this position stands, it means that Iowa has weaseled its way around legislation designed to prevent this very result.

The Department of Revenue is entirely out of line here, but they will keep it up as long as they can get away with it — and the KFC decision shows that Iowa’s courts will let them get away with plenty. Congress is way overdue in restricting these overly aggressive positions by state revenue departments. Of course these overly-aggressive decisions are harder on smaller businesses, who have fewer resources to spend on tax compliance than Brown-Forman does.

It’s also time for Iowa to form an independent tax court. The next time an administrative law judge opposes the Department on a significant issue may be the first time.

Finally, the Supreme Court should take another state tax case. The states have eroded the 1991 Quill decision to irrelevance with positions like this. It appears that the Supreme Court has to slap the states every couple of decades to keep them within the law.

So LV, stop selling merch in Iowa (and any other state that may come up with this kind of thinking), or choke on your “trademark” by drowning in taxes.

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