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Only Pantalony
On 29 February 2012, Penn Law Dean Michael A Fitts received an email from one Michael Pantalony, Louis Vuittons Director of Civil Enforcement for North America. Pantalony wrote to express [his] concerns over the unauthorised use of [the companys trademarks to promote the 20 March symposium. In Pantalonys view, the student group behind the event (PIPG) had misappropriated and modied the LV trademarks and Toile Monogram, which Pantalony considered an egregious action [of] serious willful infringement [that] knowingly dilute[d] the LV trademarks. The harm, according to Pantalony, lay in the risk that the poster might mislead viewers into believing that the PIPGs modication of the Toile Monogram constituted legal fair use and/or inaccurately suggest that Louis Vuitton either sponsored the seminar or was otherwise involved. Pantalony lamented that he would have thought the Penn Intellectual Property Group would understand the basics of intellectual property law and know better than to infringe and dilute the famous trademarks of fashion brands. The letter quickly made its way onto the internet, where it was widely circulated.
The poster for the 20 March 2012 symposium advertised two panels: Trademark and the Fast Fashion Phenomenon and Copyright for Fashion Design: Evaluating the Innovation Design Protection and Piracy Prevention Act (IDPPPA), along with a keynote address. The poster maintained the same brown-and-gold colour scheme throughout, with the exception of a section for sponsors, featuring the imported logos of Penn Law and
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May 2012
doubt[s that] any of [LVs] trademarks are registered in Class 41 to cover educational symposia in intellectual property law issues. The proximity of the products [or services at issue] is, of course, just one of many likelihood of confusion (or Polaroid) factors used to adjudicate claims of trademark infringement. Further, the specic classes listed in a trademark registration are not dispositive on this issue. Conversely, Pantalonys assertion that Louis Vuitton had sponsored [educational] activities in the past proves too much. Indeed, the same test for likelihood of confusion Polaroid factor mentioned above is concerned not only with the proximity of the plaintiffs and defendants goods or services, but with their competitive proximity4. If, as the Second Circuit has stated, vodka rum, and malt beveragesreside in distinct submarkets for purposes of competitive proximity5, it is silly to make much of Louis Vuittons occasional dabbling in educational programmes. Most large corporations, of course, have backed events outside of their primary industries; that is neither here nor there. True, there is the Lanham Acts sponsorship/afliation language to consider6. But it is probably safe to say that there is no signicant public recognition of Louis Vuitton as a commercial provider or as a consistent sponsor of educational goods or services. Further, as a normative matter, do we really want to stretch the sponsorship, afliation, connection, or identication7 language of the Lanham Act so far as to include every non-critical, referential use of anothers trademark? Even Louis Vuitton stopped short of taking such an extreme position in the Warner Brothers case, urging the District Court to impose liability for the Hangover IIs alleged misrepresentation of an imitation bag as the real thing not merely for the unauthorised use of a genuine Louis Vuitton bag.
Footnotes 1. See, eg, Louis Vuitton Malletier SA v LY USA, Inc, 08-4483-CV, 2012 US App LEXIS 6391, at *76-*77 (2d Cir 29 March 2012); In the Matter of Certain Handbags, Luggage, Accessories and Packaging Thereof, ITC Inv No 337-TA-754 (US Intl Trade Commn Order No. 16, 5 March 2012). 2. Louis Vuitton Malletier, SA v Warner Bros Ent Inc, 11 Civ 9436 (SDNY 22 December 2011) (Complaint led; case status pending). 3. Firestone did not quote any passages from the Fourth Circuits opinion in what has come to be known as the Chewy Vuitton dog toy case. Notably, the court had found for the defendant in that case in part because it had used CV to mimic LV adopt[ing] imperfectly the items of LVMs designs. id at 268 (emphasis in original). PIPGs transformation of LV into TM is strikingly similar. 4. Star Indus v Bacardi & Co, 412 F3d 373, 386 (2d Cir 2005) (emphasis added). 5. Star Indus v Bacardi & Co, 412 F3d 373, 387 (2d Cir 2005). 6. See 15 USC 1125(a)(1)(A). 7. id at 383. 8. Jenevieve Maerker, Trademark parody dispute puts fashion law in the spotlight, 21 March 2012, at http://bit.ly/GIIbPa. 9. Alison Frankel, Louis Vuitton and Penn offer unintended lesson in trademark law, Thomson Reuters News & Insight, 9 March 2012, at http:// reut.rs/xwr2Fz. 10. In the interest of full disclosure, my rm, Charles Colman Law, PLLC, served as Kanes co-counsel, alongside the Los Angeles-based Doniger/ Burroughs Law Firm. 11. Lovelyish.com, The new face of Forever 21 is a blogger: how ironic, 8 July 2011, at http://bit.ly/ Hv4XFk. 12. See, eg, Jenna Sauers, Forever 21 sues fashion blogger, Jezebel, 6 June 2011, at http://bit.ly/ is0Y22 ([t]his seems like a textbook example of a SLAPP, a lawsuit or legal threat that is intended not to win a claim, but to silence a critic.)
Author
Charles E Colman is the founder of Charles Colman Law, PLLC, where he handles intellectual property disputes and other legal matters arising in fashion, music, and art.
May 2012
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