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Lessons in trademark enforcement: bullion without bullying
Charles Colman Law’s Charles E Colman looks at how an aggressive trademark strategy can work against you
Louis Vuitton Malletier, SA (“Louis Vuitton”), is proud of its trademarks, and it is not afraid to show it. The fashion heavyweight has repeatedly made headlines over the past six months for its aggressive efforts to police the use of its trademarks. Such efforts include taking on not only run-of-themill counterfeiters (and winning)1, but also declaring war on such daunting foes as Warner Brothers2 (for the alleged misrepresentation of an imitation Vuitton bag as the real thing in The Hangover: Part II). At issue in most of these disputes is Louis Vuitton’s registered “Toile Monogram” trademark, a repeating pattern design of the letters ‘LV’ and ﬂower-like symbols on a chestnut background. Perhaps inspired by Louis Vuitton’s highly publicised trademark enforcement tactics, a student at the University of Pennsylvania Law School came up with a clever graphic design concept earlier this year. In order to promote the student-run Penn Intellectual Property Group’s 2012 annual symposium on “Fashion Law,” the group released a poster and invitation whose top third consisted of a modiﬁed “Toile Monogram” pattern. Given the nature of the conference, Louis Vuitton’s interlocking “LV” had been substituted with an interlocking “TM” for “trademark,” while some ﬂower icons now appeared as the copyright symbol. The mischievous result can be seen below: several large law ﬁrms. As Louis Vuitton had not sponsored the event, its name did not appear in this portion of the poster – though it soon became involved in an altogether different capacity. Vuitton Malletier SA v Haute Diggity Dog, LLC, 507 F3d 252 (4th Cir 2007)3. Firestone’s infringement argument was respectable, if more vulnerable than his dilution defence. He asserted that the legal professionals attending the conference “certainly are unlikely to think that Louis Vuitton is organising the conference”, given the poster’s indication that “PIPG has organised the event, with support from Penn Law and a number of nationally-known law ﬁrms”. Further, “no reasonable person would be confused” about Louis Vuitton’s (lack of) involvement with the symposium “merely because of the clever artwork parody”. Perhaps most powerfully, Firestone pointed out that the artwork was “designed to evoke some of the very issues to be discussed at the conference”, which he then enumerated. In closing, Firestone “encouraged” Pantalony to attend the conference (though it seems he was a no-show.) Like Pantalony’s letter, Firestone’s email ﬂew around the internet. The dispute apparently concluded with Firestone’s response, as the poster was not retracted and the event took place as scheduled.
On 29 February 2012, Penn Law Dean Michael A Fitts received an email from one Michael Pantalony, Louis Vuitton’s “Director of Civil Enforcement” for North America. Pantalony wrote “to express [his] concerns over the unauthorised use of [the company’s trademarks to promote” the 20 March symposium. In Pantalony’s view, the student group behind the event (“PIPG”) had “misappropriated and modiﬁed 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 PIPG’s modiﬁcation 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.
Who was right?
Firestone’s invitation to Pantalony could be read as disingenuous, but his list of the issues to be addressed at the symposium was downright diplomatic. Firestone graciously declined to mention, for example, that an effective evaluation of a proposal (like the “IDPPPA”, the subject of its own panel) to create new IP rights requires a probing examination of how existing rights have been used (or abused) by the proposed law’s beneﬁciaries. Firestone could have pointed out (but did not) that by making its threat, Louis Vuitton had virtually guaranteed that “trademark bullying” by IP owners – and probably, by Louis Vuitton in particular – would now be on the conference agenda. (Indeed, the topic was discussed at the event.) In other words, Louis Vuitton’s aggressive response to the poster actually reduced the likelihood that trademark infringement or dilution had occurred by increasing the topicality and freespeech implications of the parody. To be fair, not all of Firestone’s punches landed. He missed the mark in expressing his
Penn Fires(tones) back
On 2 March 2012, the university’s associate general counsel, Robert F Firestone, lobbed his own missive back at Pantalony. Firestone wisely led with his strongest point: the poster could not “dilute” any of Louis Vuitton’s marks because a provision of the federal Lanham Act, 15 USC § 1125(c)(3), in Firestone’s words, “expressly protects a noncommercial use of a mark and a parody from any claim for dilution”. In Firestone’s view, the issue was simple: “A law student group at a non-proﬁt university promoting its annual educational symposium is a noncommercial use”. As if to rub salt in the wound, Firestone then cited one of Louis Vuitton’s greatest defeats: Louis
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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“doubt[s that] any of [LV’s] 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 speciﬁc classes listed in a trademark registration are not dispositive on this issue. Conversely, Pantalony’s 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 plaintiff’s and defendant’s goods or services, but with their “competitive proximity4”. If, as the Second Circuit has stated, “vodka rum, and malt beverages…reside in distinct submarkets” for purposes of “competitive proximity5”, it is silly to make much of Louis Vuitton’s 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 Act’s “sponsorship”/“afﬁliation” language to consider6. But it is probably safe to say that there is no signiﬁcant 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, afﬁliation, connection, or identiﬁcation7” language of the Lanham Act so far as to include every non-critical, referential use of another’s 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 II’s alleged misrepresentation of an imitation bag as the real thing – not merely for the unauthorised use of a genuine Louis Vuitton bag.
The bottom line
Perhaps because the Penn Law poster showdown had a certain ivory tower air about it, it likely caused little lasting damage to the Louis Vuitton brand. But that does not mean companies should follow Louis Vuitton’s example, as things can go far worse for aggressive IP owners who overstep in the digital age. Consider another fashion-related PR debacle, which arose in mid-2011, when inhouse counsel for retail chain Forever 21 sent a cease-and-desist letter to blogger, Rachel Kane, over alleged trademark infringement and dilution (and copyright infringement) on her site, WTForever21.com10. Kane, a social media-savvy twenty-something, promptly posted and circulated the letter. Unlike the Louis Vuitton-Penn Law dispute, the WTForever 21 story made headlines in virtually every national media outlet. It is, of course, impossible to know how many consumers read about Kane’s case and changed their purchasing habits as a result. Further, there is at least reason to believe that Forever 21 feared a PR backlash: shortly after Kane instructed a lawyer and Forever 21 backed down, the company anointed a blogger the “new face” of the company. Naturally, some expressed skepticism about Forever 21’s motives11.
Let them eat cake (sometimes)
By this point, it should be obvious that companies must tread carefully when handling situations like the Penn Law School poster or the WTForever 21 blog. Corporate counsel should keep in mind that cease-anddesist letters can and often will be posted and circulated on the internet, resulting in much greater exposure for the allegedly infringing material. Further, consumers frequently confuse cease-and-desist letters with lawsuits12, exacerbating the PR fallout. And the smaller the target, the greater the likely damage, as the public will readily side with an individual targeted by a large corporation. In short, while it is certainly important to “police one’s trademark”, not every debatable use of a mark need be squelched; indeed, diverting resources toward parodies – particularly where doing so will only increase their exposure – will often then prove to be a waste of valuable company time, or worse. With the public increasingly attuned to the issue of “trademark bullying”, companies should (re)prioritise their targets and evaluate the real risk of letting marginal infringers have their fun. To paraphrase the wife of another Louis, sometimes, it is best to simply let them eat cake.
The People v Louis Vuitton
The journalistic and popular response to Louis Vuitton’s letter, while not as vociferous as the outcry following similar threats in the past, was by no means trivial. Foley Hoag LLP’s trademark & copyright law blog noted that Pantalony had “set the blogosphere atwitter … by sending [his] sternly-worded cease-and-desist letter” and speculated that the threat had “likely proved to be a far more successful publicity tool than [the poster’s] designers could have originally hoped8”. Reuters’ Alison Frankel was more openly critical, asking, “Is there any trademark owner with less of a sense of humour than Louis Vuitton9?”.
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 Int’l Trade Comm’n Order No. 16, 5 March 2012). 2. Louis Vuitton Malletier, SA v Warner Bros Ent Inc, 11 Civ 9436 (SDNY 22 December 2011) (Complaint ﬁled; case status pending). 3. Firestone did not quote any passages from the Fourth Circuit’s 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 LVM’s designs”. id at 268 (emphasis in original). PIPG’s 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 ﬁrm, Charles Colman Law, PLLC, served as Kane’s 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”.)
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.
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