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

Tue, Mar 6th 2012 5:46am — Mike Masnick

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.

Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.

Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.

While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.

–The Techdirt Team

Filed Under: fashion, law school, symposiu, trademark, upenn
Companies: louis vuitton

62 Comments

If you liked this post, you may also be interested in...

Reader Comments

Subscribe: RSS

View by: Time | Thread

Anonymous Coward, 6 Mar 2012 @ 6:18am

Bad Lawyering for LV
Apparently LV has really bad taste-- in Lawyers.

Anyone who would attack a nest of lawyers and law students with infinite time to research and respond to your letters is not smart.
[ link to this | view in thread ]
David Muir (profile), 6 Mar 2012 @ 6:30am

"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.
[ link to this | view in thread ]
Cloksin (profile), 6 Mar 2012 @ 6:36am

In your face
I love how the PIPG's lawyer cited a LV court case to back his claim of fair use and parody. Absolutely priceless.

"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)."
[ link to this | view in thread ]
Machin Shin (profile), 6 Mar 2012 @ 6:38am

Re: 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."
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 6:44am

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?
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 6:46am

Re: Uggh, copyright for fashion design?
Because money?
[ link to this | view in thread ]
Bengie, 6 Mar 2012 @ 6:50am

Criminal
Professional negligence with malicious intent should be a criminal offense.
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 7:05am

LV was just being nice and providing some talking points for the conference.
[ link to this | view in thread ]
BentFranklin (profile), 6 Mar 2012 @ 7:12am

Share how you feel here:

http://www.louisvuitton.com/front/#/eng_US/Contact-us
[ link to this | view in thread ]
Mesonoxian Eve (profile), 6 Mar 2012 @ 7:16am

It would be more fun if the event organizers quickly threw a t-shirt together with the redesigned pattern with the words "Bite it, Louis." written on the back.

In fact, if they sold these, making sure XL is one of the sizes, I'd get my CC ready.
>:]
[ link to this | view in thread ]
urza9814, 6 Mar 2012 @ 7:18am

Re: 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.
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 7:19am

Two-fer
Smackdown...WIN!
Promotion...WIN!
LV lawyer..FAIL
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 7:21am

I looked at it, and in passing, I thought it was LV, and thought that, just looking at the invite, that LV was supporting it.

I think they have a case.
[ link to this | view in thread ]
Sinan Unur (profile), 6 Mar 2012 @ 7:22am

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.
[ link to this | view in thread ]
Anon-really-anon, 6 Mar 2012 @ 7:29am

Re: Uggh, copyright for fashion design?
I think its a 'trademark' oriented discussion overall.
[ link to this | view in thread ]
Suja (profile), 6 Mar 2012 @ 7:34am

Re: Re: Uggh, copyright for fashion design?
And power?
[ link to this | view in thread ]
Suja (profile), 6 Mar 2012 @ 7:34am

Re: Re: Re: Uggh, copyright for fashion design?
Power through control that is...
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 7:35am

Re:
I looked at your comment, and in passing, I thought you were a moron.

I think you have no brains.
[ link to this | view in thread ]
Suja (profile), 6 Mar 2012 @ 7:36am

Re: Criminal
At the very least it should warrant a slap in the face.
[ link to this | view in thread ]
Anonymous Anonymous Coward, 6 Mar 2012 @ 7:54am

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.
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 8:01am

Re: Re:
So don't sell it. Make it a gift you receive for making a charitable contribution to the University. :)
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 8:12am

Priceless
"Pantalony" is a GREAT name for LV's lawyer.
[ link to this | view in thread ]
Berenerd (profile), 6 Mar 2012 @ 8:14am

Re: "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.
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 8:14am

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.
[ link to this | view in thread ]
Pixelation, 6 Mar 2012 @ 8:26am

When...
I imagine it has been asked before...When are lawyers like this going to get smacked for writing threatening letters knowing that they are a lie?
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 8:27am

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?
[ link to this | view in thread ]
Andrew F (profile), 6 Mar 2012 @ 8:31am

Awww ... no submission credit?
[ link to this | view in thread ]
MPHinPgh (profile), 6 Mar 2012 @ 8:33am

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.
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 8:47am

Re:
They don't, but good effort at turning yourself into the moron in a hurry.
[ link to this | view in thread ]
Pixelation, 6 Mar 2012 @ 8:48am

I think LV will win if it goes to court. When I first looked at the poster I thought it was a LV Purse.
[ link to this | view in thread ]
The Devil's Coachman (profile), 6 Mar 2012 @ 8:56am

Re: Re: Criminal
Kick to the groin would be more appropriate.
[ link to this | view in thread ]
The Devil's Coachman (profile), 6 Mar 2012 @ 8:57am

Re:
I think you have a case. A mental one.
[ link to this | view in thread ]
Avatar28 (profile), 6 Mar 2012 @ 8:58am

Re: 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.
[ link to this | view in thread ]
The Devil's Coachman (profile), 6 Mar 2012 @ 9:00am

Re:
Since it began as completely unprofessional on the part of the LV attorney, responding in kind was entirely appropriate. It matters not what you think.
[ link to this | view in thread ]
The Devil's Coachman (profile), 6 Mar 2012 @ 9:01am

Re:
Time for your optometrist visit?
[ link to this | view in thread ]
The Devil's Coachman (profile), 6 Mar 2012 @ 9:03am

Re: When...
When they send one to me. Believe me, smacking wouldn't even begin to describe the result. Studded gloves and shoes are very effective at correcting inappropriate legal behavior. Then there's the bat.
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 9:20am

Re:
lv got the response they deserve

lv was not at all justified in sending the C&D for trademark infringement because there is no infringement
[ link to this | view in thread ]
TtfnJohn (profile), 6 Mar 2012 @ 9:24am

Re: "We'll absolutely cease and desist. Yes, sir."
Communications people should, and more often than not, do refer this sort of things to the institution's lawyers. Just why this one didn't is beyond me.
[ link to this | view in thread ]
Vidiot (profile), 6 Mar 2012 @ 9:26am

Re: Re:
Better yet, have 50 local vendors silkscreen them, and sell them intrastate.
[ link to this | view in thread ]
Vidiot (profile), 6 Mar 2012 @ 9:30am

The perfect story
This is a Techdirt story that can't be beat... hyper-obvious stupidity and hubris, followed with good ol' fashioned comeuppance. Biggest smile of the day.
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 9:32am

Re: 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.
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 9:35am

Appropriate analogies...
This is the equivalent of walking up to a hornets' nest and whacking it half a dozen times with a broom then standing there staring at it and wondering what will happen next.
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 9:36am

Higher Resolution
I wish they provided a higher resolution so I could scale that to my desktop background.
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 9:41am

Re:
Good thing you're not a part of the intended audience.
[ link to this | view in thread ]
TtfnJohn (profile), 6 Mar 2012 @ 10:00am

Re: 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.
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 10:01am

Re: Re: Uggh, copyright for fashion design?
Two years? No. It would be more like six months.
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 10:08am

Re: In your face
Clearly that is a subtle return of the "you should know better" comment.
[ link to this | view in thread ]
MPHinPgh (profile), 6 Mar 2012 @ 10:35am

Re: Re: Whip out the clue bat! But...
I'd say it is more like HOW the Streisand Effect was created, but your point is duly noted.
[ link to this | view in thread ]
David Muir (profile), 6 Mar 2012 @ 10:44am

Re: Re: "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.
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 11:08am

Re:
And yet that still isn't enough.

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.
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 11:23am

Re: Re: Re: Whip out the clue bat! But...
I wasn't implying that it purposely created because of this but rather the stated case was the CAUSE of it.
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 11:25am

Re: Re: Re: Criminal
Roshambo!
[ link to this | view in thread ]
Anonymous, 6 Mar 2012 @ 11:58am

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).
[ link to this | view in thread ]
TaCktiX (profile), 6 Mar 2012 @ 12:46pm

Re: Higher Resolution
You could always just select the "tile" option, since it's a regular pattern.
[ link to this | view in thread ]
Prisoner 201, 6 Mar 2012 @ 1:54pm

Re: Uggh, copyright for fashion design?
There is a brilliant TED talk by Johanna Blakely about copyright and fashion.

She also talks about why zero copyright may be a good thing for other industries as well.
[ link to this | view in thread ]
Prisoner 201, 6 Mar 2012 @ 1:55pm

Re: Re: Uggh, copyright for fashion design?
Orignal TED video.
[ link to this | view in thread ]
Cynyr (profile), 6 Mar 2012 @ 6:29pm

Re: Re: Re: Uggh, copyright for fashion design?
And include a provision that only allows conduct the reflects well on the brand. As defined by them for any particular instance.
[ link to this | view in thread ]
blurry musicman, 6 Mar 2012 @ 7:16pm

Re: Re: Uggh, copyright for fashion design?
In australia for music videos, all obvious branded items, mainly alcohol & clothes,has the labels blurred. This also occurs with most tattoos
[ link to this | view in thread ]
TtfnJohn (profile), 6 Mar 2012 @ 7:42pm

Re: Re:
Good parody should be as near the real thing as you can get requiring that you think a moment or two before realizing it.

It's certainly more entertaining that way :)
[ link to this | view in thread ]
Anonymous Coward, 6 Mar 2012 @ 11:03pm

Re: 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.
[ link to this | view in thread ]
Anonymous Coward, 7 Mar 2012 @ 2:28pm

Re: Re: Re:
LV sponsors many legal conferences do they?
[ link to this | view in thread ]
Anonymous Coward, 26 Jun 2012 @ 12:43pm

Re:
I looked at it and said "How the heck does anyone get LV outta that?"
[ link to this | view in thread ]