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:
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.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.
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....
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Filed Under: fashion, law school, symposiu, trademark, upenn
Companies: louis vuitton
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Bad Lawyering for LV
Anyone who would attack a nest of lawyers and law students with infinite time to research and respond to your letters is not smart.
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Re: Bad Lawyering for LV
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."
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"We'll absolutely cease and desist. Yes, sir."
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Re: "We'll absolutely cease and desist. Yes, sir."
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Re: Re: "We'll absolutely cease and desist. Yes, sir."
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.
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Re: "We'll absolutely cease and desist. Yes, sir."
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In your face
"Lastly, the artwork clearly is a fair use under 15 U.S.C 1125(c)(3)(A), and a parody protected under 15 U.S.C. 1125(c)(3)(A)(ii). See also Loius Vuitton Malletier vs. Haute Diggity Dog, LLC. 507 F.3d 252 (4th Cir. 2007)."
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Re: In your face
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Uggh, copyright for fashion design?
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?
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Re: Uggh, copyright for fashion design?
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Re: Uggh, copyright for fashion design?
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Re: Uggh, copyright for fashion design?
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Re: Uggh, copyright for fashion design?
Also, shrinkwrap licenses:
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Re: Uggh, copyright 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.
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Re: Uggh, copyright for fashion design?
She also talks about why zero copyright may be a good thing for other industries as well.
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Re: Re: Uggh, copyright for fashion design?
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Criminal
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Re: Criminal
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http://www.louisvuitton.com/front/#/eng_US/Contact-us
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In fact, if they sold these, making sure XL is one of the sizes, I'd get my CC ready.
>:]
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Two-fer
Promotion...WIN!
LV lawyer..FAIL
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I think they have a case.
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I think you have no brains.
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Re:
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.
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It's certainly more entertaining that way :)
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Re: Re:
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.
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Encourage them ;-)
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.
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Priceless
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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.
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lv was not at all justified in sending the C&D for trademark infringement because there is no infringement
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When...
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Re: When...
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Whip out the clue bat! But...
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Re: Whip out the clue bat! But...
And this is PRECISELY why the Streisand effect was created.
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They aren't using it to promote a product or service. And further, they don't have it trademarked in the area of use they (the school) are using it for.
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The perfect story
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Appropriate analogies...
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Higher Resolution
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Re: Higher Resolution
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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).
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