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The appearance of a knockoff designer bag in a popular comedic film is protected by the First Amendment and does not give rise to claims under the Lanham Act or under New York state law, the U.S. District Court for the Southern District of New York ruled June 15 (Louis Vuitton Malletier S.A. v. Warner Bros. Entertainment Inc., S.D.N.Y., No. 1:11-cv-09436-ALC-HBP, 6/15/12).
Dismissing the claims under Fed. R. Civ. P. 12(b)(6), the court rejected the argument that such conclusions could not be reached absent a full evidentiary proceeding.
Since 1854, Louis Vuitton Malletier S.A., a French fashion house (now a unit of LVMH Moët Hennessy), has been producing luxury consumer goods, including apparel and accessories. It has been marketing its goods in the United States since 1893.
Diophy Group is a Chinese-American company that creates knockoffs of popular fashion items.
In 2009, Warner Bros. Entertainment Inc. distributed the motion picture The Hangover, featuring actors Bradley Cooper, Ed Helms, and Zach Galifianakis. The film was a critical and commercial success and was followed up in 2011 by a sequel, The Hangover Part II.
In an early scene of the sequel, set in an airport, Galifianakis's character objects to rough treatment of what he identifies as a “Louis Vuitton” bag. However, the bag actually used as a prop in that scene was a Diophy knockoff.
Louis Vuitton sued Warner Bros., alleging false designation of origin under the Lanham Act, 15 U.S.C. §1125(a)(1)(A); unfair competition under New York state common law; and trademark dilution under state law, N.Y. Gen. Bus. Law §360-l.
Warner Bros. moved for dismissal under Fed. R. Civ. P. 12(b)(b) for failure to state a claim for which relief is available under the law, arguing that its use of the Diophy bag as a prop in the movie was protected by the First Amendment.
Louis Vuitton does not object to Warner Bros.' unauthorized use of the LVM Marks or reference to the name Louis Vuitton in the Film. Nor does Louis Vuitton claim that Warner Bros. misled the public into believing that Louis Vuitton sponsored or was affiliated with the Film. Rather, Louis Vuitton contends that Warner Bros. impermissibly used a third-party's bag that allegedly infringes on the LVM Marks.
Turning specifically to the Lanham Act claim, the court cited Rogers v. Grimaldi, 875 F.2d 884, 10 USPQ2d 1825 (2d Cir. 1989), which held that the use of a trademark in an artistic work is protected by the First Amendment if it is artistically relevant and if it is not explicitly misleading.
The court first found that the appearance of the bag in the film met the “low threshold” of artistic relevance. The reference to the bag in the airport scene was to display the snobbishness and cluelessness of the character. The court said:
Alan's terse remark to Teddy to “[be] [c]areful” because his bag “is a Lewis Vuitton” comes across as snobbish only because the public signifies Louis Vuitton--to which the Diophy bag looks confusingly similar--with luxury and a high society lifestyle. … His remark also comes across as funny because he mispronounces the French “Louis” like the English “Lewis,” and ironic because he cannot correctly pronounce the brand name of one of his expensive possessions, adding to the image of Alan as a socially inept and comically misinformed character.
The court rejected Louis Vuitton's argument that the artistic relevance of such a use could not be established without a full evidentiary record, specifically regarding the question of whether Warner Bros. intentionally used the Diophy bag in the scene.
Warner Bros.' intent was not relevant here, the court said, because the appearance of the bag in the scene relies only upon the fact that it looks like a Louis Vuitton bag, not whether it is a genuine or knockoff bag.
“Warner Bros.' use of the Diophy bag … was intended to create an artistic association with Louis Vuitton, and there is no indication that is use was commercially motivated,” the court concluded, finding that the discovery sought by Louis Vuitton was irrelevant to the issue.
Next, the court determined that the use in the film was not explicitly misleading as to the source or content of the work. According to Twin Peaks Productions Inc. v. Publications International Ltd., 996 F.2d 1366, 27 USPQ2d 1001 (2d Cir. 1993), this part of the Grimaldi test asks whether viewers are induced to believe that Louis Vuitton either authorized or created the work.
The court rejected the argument that the explicitly misleading prong of the test encompasses the question of whether third party goods appearing in the work were created or sponsored by the trademark holder.
Even if viewers are misled to the extent that they believe either that the Diophy bag that appears in the movie is a genuine Louis Vuitton bag or that Louis Vuitton approved of the appearance of a Diophy bag in the film, the court said, viewers are still not misled as to the origin or sponsorship of the actual work, that is, the movie itself.
Here, there is no likelihood of confusion that viewers would believe that the Diophy bag is a real Louis Vuitton bag just because a fictional character made this claim in the context of a fictional movie. Neither is there a likelihood of confusion that this statement would cause viewers to believe that Louis Vuitton approved of Warner Bros.' use of the Diophy bag.
No discovery could overcome this finding, the court said.
The state law claims were dismissed on the same basis.
Louis Vuitton was represented by Theodore Conrad Max of Sheppard, Mullin, Richter & Hampton, New York. Warner Bros. was represented by Andrew Harrison Bart of Jenner & Block, New York.
Opinion at http://pub.bna.com/ptcj/119436Jun15.pdf
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