Ridiculous: Court Says Mock Basketball Which Appears In Hyundia Commercial For 1 Second 'Dilutes' LV Trademark

from the are-they-insane? dept

Wed, Apr 4th 2012 10:35am — Mike Masnick

A little over two years ago, we wrote about what we considered to be an absolutely insane lawsuit from Louis Vuitton, arguing that a mock basketball, which appeared in a Hyundai commercial for one second violated LV's trademark. You can see the commercial below:
If you missed it (entirely possible), at the 3 second mark, this image flashes briefly:

The point of the commercial is to get people to imagine what life would be like if "luxury" items were everyday items, and thus the mock basketball with symbols designed to suggest a luxury bag, like a Louis Vuitton bag. As we (and many, many trademark experts) suggested when the lawsuit was filed, the claims here are simply crazy. There is simply no harm whatsoever done to Louis Vuitton by this ad. Most people wouldn't even notice the markings and if they did, what possible "harm" would it do? The answer is none. There is no consumer confusion whatsoever. There are no LV basketballs that won't be sold because of this (in fact, the judge in this case notes that, after seeing this commercial, some people wanted one -- which would suggest a market opportunity, rather than litigation).

Of course, Louis Vuitton's complaint didn't rest on the bedrock of trademark law -- the likelihood of confusion -- but a more modern bastardization of trademark law called "dilution." The concept of dilution in trademark law is an affront to the purpose of trademark law, which is supposed to be about protecting consumers from confusion. That is, it's supposed to be about preventing someone from buying Bob's Cola, thinking that it's really Coca-Cola. But there's no such risk here. Dilution, however, flips the very concept of trademark law on its head and pretends (falsely) that trademark law is about protecting a company's trademarks from anyone doing anything at all with it that the company doesn't like.

Unfortunately, the courts don't always get things right -- which is why we get such ridiculous lawsuits in the first place -- and here, amazingly, the district court has sided with Louis Vuitton in its dilution argument, granting summary judgment on Hyundia's liability for dilution, while it rejected Hyundai's movement for summary judgment rejecting all of Louis Vuitton's claims. This is, in many ways, horrifying.

Eric Goldman's summary, linked above, highlights the many problems with the ruling -- while cautioning that the details suggest this type of ruling is limited. Still, as he notes:

And then we have an opinion like this--where the court finds trademark dilution without finding infringement (not resolved yet) and in a situation where EVERYONE can immediately tell there was zero harm to the brand owner. Rulings like this make trademark academics shudder in fear that trademark dilution will swallow up all of trademark law and confer rights-in-gross to trademark owners. While I don't share those fears for reasons I'll explain in a bit, unquestionably this is a bad ruling.

Goldman goes on to highlight some of the more specific problems with the ruling, but the key point is simply that there is no harm here. None. Absolutely none. Perhaps less than none, given the reports of interest in LV basketballs. When the law doesn't care about that, then the law is, unquestionably, broken. A ruling like this automatically lessens respect for trademark law, because it makes no sense at all. It makes a mockery of the judicial system by suggesting that lawsuits like this have any merit whatsoever.

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: basketball, commercial, dilution, eric goldman
Companies: hyundai, louis vuitton

38 Comments

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

Reader Comments

Subscribe: RSS

View by: Time | Thread

RD, 4 Apr 2012 @ 10:40am

Well, there goes Fair Use
So you can kiss Fair Use, commentary and criticism, and anything even remotely related goodbye. A further stripping of the rights of the public to enrich the rich and keep the powerful in power.
[ link to this | view in thread ]
Ima Fish (profile), 4 Apr 2012 @ 10:47am

Speaking of stupid lawsuits, remember that lawsuit filed by the actress who sued IMDB/Amazon for daring to publish her real age? The judge in the case is allowing it to proceed.

http://www.courthousenews.com/2012/04/03/45292.htm

Apparently it's against the law to post public data on the internet.
[ link to this | view in thread ]
weneedhelp (profile), 4 Apr 2012 @ 10:48am

Pretty soon you wont be able to show anything. Shows will be actors and blur marks around them.
[ link to this | view in thread ]
Anonymous Coward, 4 Apr 2012 @ 10:49am

what makes things worse is it shows just what sort of morons can be given jobs as judges, issuing rulings over us lesser mortals, when they appear to have no little knowledge of the law and even less common sense!
[ link to this | view in thread ]
Anonymous Coward, 4 Apr 2012 @ 11:10am

The lawsuit is crazy, but keep an eye out for those LV basketballs...someone's gonna do it. That LV pattern is ugly as shit anyway.
[ link to this | view in thread ]
Chuck Norris' Enemy (deceased) (profile), 4 Apr 2012 @ 11:12am

I have to have one!
I searched all over LouisVuitton.com and cannot find this basketball for sale! Please help!!! Maybe I'll buy a counterfeit from the local Hyundai dealership. =]
[ link to this | view in thread ]
Anonymous Coward, 4 Apr 2012 @ 11:12am

Re:
Until this happens:

"Hey! That actor kinda looks like the guy in our logo!"

*LAWSUIT*
[ link to this | view in thread ]
Baldaur Regis (profile), 4 Apr 2012 @ 11:27am

So, showing an ad implying exclusiveness and luxury of LV products is grounds for a lawsuit....oooooookay, time for their lawyers to get off retainers and actually justify their actions. Maybe, I don't know, run these ideas past their bosses.
[ link to this | view in thread ]
Mike42 (profile), 4 Apr 2012 @ 11:28am

Re:
It wasn't public data, it was private data.
The only way they could have gotten this information was to query private, supposedly confidential records (credit cards, etc.)

THAT is what the lawsuit is about, NOT public information.
[ link to this | view in thread ]
Faith Fulreeder, 4 Apr 2012 @ 11:42am

One Question:
Who the fuck is "louis mutton" and why should anyone give a squirrel's left nut about him or them?
[ link to this | view in thread ]
Ninja (profile), 4 Apr 2012 @ 11:44am

LV is famous for being total jerks (run by lawyers, maybe?) and from personal experience the ones that buy original LV stuff (purses and the likes) are total jerks too. But I digress.

The scary part is that Trademark/Copyright/Patent is becoming so broken and evil that I wouldn't be surprised if this goes ahead...
[ link to this | view in thread ]
Gwiz (profile), 4 Apr 2012 @ 11:44am

Where's the "L" and "V"?
The images I have seen for the "Louis Vuitton pattern" all have a "L" and a "V" superimposed on each other in the pattern. The basketball has a pattern of shapes and none (as far as I can tell) of them look like a "L" or a "V".

So did this court really say that any repeating pattern of shapes is a dilution of the LV trademark?

I guess I need to disable the "step and repeat" functions in all my graphics programs now. And what about all those backdrops used for press conferences? Those have repeating patterns too.
[ link to this | view in thread ]
Anonymous Coward, 4 Apr 2012 @ 11:51am

Re: Where's the "L" and "V"?
I call it tosspattern.

You know, like you get from throwing things down.

or otherwise derived

from the people who own or use it.
[ link to this | view in thread ]
Ima Fish (profile), 4 Apr 2012 @ 11:52am

Re: Re:
God, at the very least read the link before commenting:
"IMDB and Amazon failed to convince the court that it had permission to mine public records for Hoang's birth date under the website's subscriber agreement or privacy policy."
Seriously, what makes people comment on stuff they're completely ignorant about?!
[ link to this | view in thread ]
This comment has been flagged by the community. Click here to show it

Anonymous Coward, 4 Apr 2012 @ 12:22pm

Of course, Louis Vuitton's complaint didn't rest on the bedrock of trademark law -- the likelihood of confusion -- but a more modern bastardization of trademark law called "dilution." The concept of dilution in trademark law is an affront to the purpose of trademark law, which is supposed to be about protecting consumers from confusion. That is, it's supposed to be about preventing someone from buying Bob's Cola, thinking that it's really Coca-Cola. But there's no such risk here. Dilution, however, flips the very concept of trademark law on its head and pretends (falsely) that trademark law is about protecting a company's trademarks from anyone doing anything at all with it that the company doesn't like.

ROFLMAO! I love when you whine about trademark law. "The law is supposed to be about something other than what the law is actually about." AWESOME logic! And, silly Mike, you do know that trademark law has ALWAYS (for centuries) been about more than "protecting consumers from confusion," right? The fact that you deny this shows what a loon you are.
[ link to this | view in thread ]
Vincent Clement (profile), 4 Apr 2012 @ 12:28pm

Re:
They are a French company. Enough said.
[ link to this | view in thread ]
art guerrilla (profile), 4 Apr 2012 @ 12:29pm

Re:
was it here i saw this lawyer joke? :
What do you call a lawyer with an IQ of 75?
Your Honor.
hee hee hee
ho ho ho
ha ha ha
ak ak ak
art guerrilla
aka ann archy
eof
[ link to this | view in thread ]
Anonymous Coward, 4 Apr 2012 @ 12:29pm

Re:
Almost everything is against the law, on the internet.
[ link to this | view in thread ]
Anonymous Coward, 4 Apr 2012 @ 12:35pm

Re:
It's funny because 'the law should be different or interpreted differently' is perfectly logical but 'the law should be what it is because that's what the law is' is an obvious logical fallacy. You're also completely wrong about the origin of trademark, it was originally about indicating sources of products to consumers and nothing else, but that's not a huge surprise.
[ link to this | view in thread ]
Anonymous Coward, 4 Apr 2012 @ 12:37pm

Re: Where's the "L" and "V"?
I see X's and O's. The O's have a dot in the middle. Target might have a case too!
[ link to this | view in thread ]
The Mighty Buzzard (profile), 4 Apr 2012 @ 1:00pm

Re: Re: Re:
Didn't you know? Facts are irrelevant when arguing.
[ link to this | view in thread ]
Thomas (profile), 4 Apr 2012 @ 1:03pm

Or maybe..
LV slipped the judge some expensive leather? Or a fat envelope?
[ link to this | view in thread ]
Anonymous Coward, 4 Apr 2012 @ 1:11pm

Re: Or maybe..
Some expensive leather? If LV is going to use the LV trademark just for bribing mere district court judge I think that's ground for a trademark dilution suit.
[ link to this | view in thread ]
Colin, 4 Apr 2012 @ 1:43pm

Wait. Some people wanted LV basketballs but couldn't get them, so NOT having branded items is somehow diluting the brand? I clearly don't know what "dilute" means...
[ link to this | view in thread ]
BentFranklin (profile), 4 Apr 2012 @ 2:19pm

What's bizarre is that this commercial holds up LV as the epitome of luxury and yet LV is complaining. Would someone please use national television to make my company's logo as synonymous with quality engineering? Please, anyone! Go right ahead! I won't sue you, I promise!
[ link to this | view in thread ]
Anonymous Coward, 4 Apr 2012 @ 4:26pm

Obviously Louis Vuitton do not want to be associated with luxury. Maybe the internet could help them here?

From now on, if you want to use an example of luxury, explicitly mention that you can't use LV as an example of luxury.
[ link to this | view in thread ]
light manufacturing LTD, 4 Apr 2012 @ 6:22pm

Diluting my brand image
In the background you can see a tall light pole. While its still daylight, you are still quite clearly able to see the clear cover over the lighting aparatus. I manufacture that cover, and have also trademarked the greyish-brown haze that is a carbon dioxide and dust infused 'pollution color'. both of these (one real item and the other an environmental atmospheric coloration are both owned by me.

Together with God (as he holds the patent on the blue sky) feel our brand has been diluted by this add as well.
[ link to this | view in thread ]
tsunku, 4 Apr 2012 @ 11:49pm

i guess this will truly upset louis vitton even more, i had no clue what their trademark looked like as i would never pay a lot of money for cheap crap.
[ link to this | view in thread ]
Lennart Regebro, 5 Apr 2012 @ 1:41am

So start making them already! Hip-hoppers who like bling would buy Louis-Vitton basketballs by the truckload!

No, instead they sue.

Idiots.
[ link to this | view in thread ]
Anonymous Coward, 5 Apr 2012 @ 4:24am

typos
What is "Hyundia" ?
[ link to this | view in thread ]
Anonymous Coward, 5 Apr 2012 @ 4:25am

typos
What is "Hyundia" ?
[ link to this | view in thread ]
Niall (profile), 5 Apr 2012 @ 5:01am

Re: Re:
Misusing American laws. Enough said.
[ link to this | view in thread ]
Mike, 5 Apr 2012 @ 6:47am

Activist Judges
Those activist judges are at it again.
[ link to this | view in thread ]
Mike, 5 Apr 2012 @ 6:47am

Activist Judges
Those activist judges are at it again.
[ link to this | view in thread ]
The Devil's Coachman (profile), 6 Apr 2012 @ 9:32am

Re:
Louis Vuitton makes some of the most butt-ugly shit you can buy. Why people pay a premium for that is beyond comprehension, but I suppose it could be explained away by the usual More Money Than Brains crowd. Why Hyundai would want to associate with their crap is also questionable. People who buy LV products are generally people with no real taste or discernment, but it does assist muggers in identifying their prey more easily, which is not a bad thing.
[ link to this | view in thread ]
The Devil's Coachman (profile), 6 Apr 2012 @ 9:33am

Re:
Louis Vuitton makes some of the most butt-ugly shit you can buy. Why people pay a premium for that is beyond comprehension, but I suppose it could be explained away by the usual More Money Than Brains crowd. Why Hyundai would want to associate with their crap is also questionable. People who buy LV products are generally people with no real taste or discernment, but it does assist muggers in identifying their prey more easily, which is not a bad thing.
[ link to this | view in thread ]
Anonymous Coward, 6 Apr 2012 @ 7:29pm

Re:
>And, silly Mike, you do know that trademark law has ALWAYS (for centuries) been about more than "protecting consumers from confusion," right?

Tell me - are there any consumers who were confused that Louis Vuitton made basketballs, now?
[ link to this | view in thread ]
Walhgm, 14 Sep 2012 @ 8:57am

Re: I have to have one!
I have the LV basketball. Hard to get one, but now I am selling it. Anyone interested in it. Let me know.
wlowry1023@me.com
[ link to this | view in thread ]