Eric Goldman has suggested that fair use owes Righthaven a debt of gratitude, given how many pro-fair use decisions it’s managed to have put on
the books. I’m not sure the same could be said for LV, but the fact that the
court doesn’t see this as a tough case should, I hope, make some potential
plaintiffs consider their exposure to attorneys’ fees awards.
LV sued WB for its use of an allegedly infringing travel bag
in The Hangover: Part II, claiming
false designation of origin, unfair competition, and state law trademark dilution.
WB moved to dismiss, and the court granted the motion.
Like it or not, the film was “the highest-gross R-rated
comedy of all time and one of the highest grossing movies in 2011.” Meanwhile,
“Diophy is a company that creates products which use a monogram design that is
a knock-off of the famous Toile Monogram.” In an early scene in the film the
four main characters are waiting for a flight to Thailand. The complaint
explains that a porter pushes a dolly with what appear to be LV trunks and
bags, and that one of the characters, Alan, carries “what appears to be a
matching over-the-shoulder Louis Vuitton ‘Keepall’ bag, but it is actually an
infringing Diophy bag.” Moments later, the scene shifts to Alan sitting on a
bench; he places the bag on the seat next to him. Another character moves the
bag so that a third character can sit down, and Alan reacts by saying: “Careful
that is . . . that is a Lewis Vuitton,” mispronouncing “Louis.” That’s it for
LV and the Diophy bag in the film.
The complaint alleged that many consumers believed that the
bag was a genuine LV and that LV consented to this misrepresentation. LV
further alleged that the harm was worsened by the prominent use of these scenes
in ads for the movie, and that the “Lewis Vuitton” line has “become an
oft-repeated and hallmark quote from the movie.”
LV attached “[r]epresentative Internet references and blog
excerpts” allegedly showing consumer confusion about genuineness. The court
dropped a footnote that, though it was taking the complaint’s allegations as
true, “none of the Internet references and blog excerpts attached to the
complaint … show that anyone is confused or mistaken into believing that the
Diophy bag was a real Louis Vuitton bag. In one blog post, a commenter notes
that the luggage on the cart is real, but the bag carried by Alan is a
‘replica.’ Although a few other posts and comments refer to the bags generally as
Louis Vuitton bags, no one else specifically writes about Alan’s bag, let alone
its authenticity.”
The court began its analysis by noting that LV was not
objecting to unauthorized use of the LV marks or reference to the LV name, nor
did it claim that WB misled the public into thinking that LV sponsored or was
affiliated with the film. Rather, LV
argued that WB impermissibly used an infringing third-party bag, confusing the
public into thinking it was an authentic LV product and that LV sponsored and
approved this use and misrepresentation.
This further allegedly caused blurring and tarnishment because of the
poor quality and shoddy reputation of the Diophy bag.
WB moved to dismiss under Rogers v. Grimaldi. In the
alternative, it argued that “basic principles of trademark law” such as the
requirement of confusion related to consumer purchasing decisions barred the
claim, but the court didn’t reach those arguments because the First Amendment
protected the film.
Rogers protects
artistic works from the Lanham Act as long as a defendant’s use is artistically
relevant and not explicitly misleading. Rogers is about titles, but courts use
it for the content of expressive works as well.
LV conceded that WB’s use of the mark was noncommercial, making it an
“artistic work” for Rogers purposes.
LV argued that artistic relevance was an issue of fact; that
“explicitly misleading” can be more than confusion about source or content of
the defendant’s work; and that there’s no First Amendment protection for using
an infringing product.
The threshold for artistic relevance is “purposely low.” “The artistic relevance prong ensures that
the defendant intended an artistic—i.e., noncommercial—association with the
plaintiff’s mark, as opposed to one in which the defendant intends to associate
with the mark to exploit the mark’s popularity and good will.” (Ah, the slippery language of intent; what a
bad idea. Of course it mattered that the
film used a famous mark instead of a high-fashion but unknown mark; mispronouncing
the famous mark allowed the filmmakers to convey Alan’s unsuccessful snobbery,
thus drawing on the mark’s popularity and goodwill. The work here is really being done by an idea
of “exploitation” that excludes “making meaning,” which is of course correct
but would benefit from clearer statement.)
WB’s use of the Diophy bag met the low threshold:
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.
LV argued that discovery was required to determine artistic
relevance. If WB intended to use an
authentic LV bag, it argued, using the Diophy bag wouldn’t be artistically
relevant. “However, the significance of
the airport scene relies on Alan’s bag—authentic or not— looking like a Louis
Vuitton bag. Louis Vuitton does not dispute this was Warner Bros.’ intention,
and therefore the discovery it seeks is irrelevant. The Court is satisfied that
Warner Bros.’ use of the Diophy bag (whether intentional or inadvertent) was
intended to create an artistic association with Louis Vuitton, and there is no
indication that its use was commercially motivated.” The cases cited by LV involved the court’s
disbelief of a defendant’s claim of communicative intent or expressed concern
that the use of the mark was “commercially motivated,” and were thus
distinguishable (citing the Dairy Queens
case, the unsuccessful case against Spiderman
for digitally altering billboards in Times Square, and Parks v. LaFace). LV also
argued that artistic relevance couldn’t be determined on a motion to dismiss,
but the court disagreed.
So, use of the Diophy bag would be unprotected only if it
explicitly misled as to the source or content of the work. The question is
whether the mark is misleading in the sense that it induces the public to
believe that the work was prepared or otherwise authorized by the
plaintiff. This involves using the Polaroid factors, but only a
particularly compelling finding of likely confusion can overcome the speaker’s First
Amendment interests. The case law has “consistently
framed the applicable standard in terms of confusion as to the defendant’s
artistic work.” This is no coincidence: “This
narrow construction of the Lanham Act accommodates the public’s interest in
free expression by restricting its application to those situations that present
the greatest risk of consumer confusion: namely, when trademarks are used to ‘dupe[]
consumers into buying a product they mistakenly believe is sponsored by the
trademark owner.’” When a trademark isn’t
used in any direct way to designate the source or sponsorship of the defendant’s
work, the consumer interest in avoiding deception is too slight to trigger the
Lanham Act.
LV argued that “explicitly misleading” also extended to
confusion about the source or content of a third party’s goods. It relied on Dallas Cowboys, “a decision whose First Amendment approach Rogers expressly declined to follow and
which has been criticized by other courts.”
Even if the case did apply to noncommercial speech, it wouldn’t help LV.
Though the Second Circuit in Dallas Cowboys said that the Lanham Act
covers confusion that “the mark’s owner sponsored or otherwise approved the use
of the trademark,” that “otherwise approved the use” language, in context,
means confusion that the mark’s owner sponsored or approved of the film. The court specifically spoke of the plaintiff’s
plans to prove at trial that the public was confused “into believing that
plaintiff sponsored the movie, provided some of the actors, licensed defendants
to use the uniform, or was in some other way connected with the production.”
The complaint alleged two theories of confusion: “(1) that
consumers will be confused into believing that the Diophy bag is really a
genuine Louis Vuitton bag; and (2) that Louis Vuitton approved the use of the
Diophy bag in the Film.” But even
drawing all reasonable inferences in LV’s favor, neither of those allegations
involved confusion as to WB’s artistic work.
“Louis Vuitton does not allege that Warner Bros. used the Diophy bag in
order to mislead consumers into believing that Louis Vuitton produced or
endorsed the Film. Therefore, the complaint fails to even allege the type of
confusion that could potentially overcome the Rogers protection.” (Or, as
I think Jeremy Sheff pointed out, that could be actionable. Approving a
use versus approving the film is
perhaps a fine distinction, but at least it starts to edge toward the real
issue of materiality: why would anyone’s purchasing decisions be affected by
confusion over whether LV allowed a use?)
Even assuming that LV stated a cognizable claim of
confusion, it would still fail. When
First Amendment values are involved, the Lanham Act must be narrowly construed. Here, the allegations weren’t plausible, let
alone “particularly compelling” as required.
First, it was highly unlikely that anyone watching would even notice
that the bag was a knock-off. LV was
trying to have it both ways: arguing that the Diophy bags created consumer
confusion but at the same time were so obviously dissimilar that viewers would
notice the slightly different symbols on the bag. “Yet, the Diophy bag appears on screen for no
more than a few seconds at a time and for less than thirty seconds in total,
and when it is on screen, it is usually in the background, out of focus, or
partially obscured by other things.” The
difference in appearance was so difficult to even notice that a confusion claim
was simply implausible. “Furthermore,
Louis Vuitton’s position assumes that viewers of the Film would take seriously
enough Alan’s statements about designer handbags (even about those he does not
correctly pronounce) that they would attribute his views to the company that
produced the Film. This assumption is hardly conceivable, and it does not cross
the line into the realm of plausibility.”
Finally, LV characterized “a statement made by a fictional
character in a fictional movie” as an affirmative misrepresentation. “However, this assumes that the fictional Alan
character knew that his bag was a knock-off; otherwise, he would simply be
(innocently) misinformed about the origin of his bag.” (I don’t see why this matters. The Lanham Act doesn’t require intent. It would make more sense to say, as the court
suggested in a footnote, that a statement made by a fictional character in a
fictional movie may not constitute a representation about origin, and thus can’t
constitute a misrepresentation.)
Anyway, the likelihood of confusion was “at best minimal,”
and certainly not particularly compelling.
The public interest in avoiding consumer confusion wasn’t enough to
overcome the “significant threats to free expression” from imposing liability
for noncommercial speech in this case. “This
is especially true since the relevant confusion is caused by a third-party—one
with whom Warner Bros. has no relationship whatsoever.” The court pointed out that contributory
infringement requires that the defendant have a connection to the sale of
confusingly similar goods. LV didn’t
allege that WB was a contributory infringer.
Now, a footnote I like a lot: “This limit on the Lanham Act “is
consistent with the text of § 43(a)(1)(A), which expressly requires the ‘confusion,’
‘mistake,’ or ‘dece[ption]’ to be ‘of [the defendant’s] goods, services, or commercial
activities,’ and with the core concern of trademark law, which is confusion related
to purchasing decisions and not confusion generally.” We even get a Dastar quote: “The words of the Lanham Act should not be stretched
to cover matters that are typically of no consequence to purchasers.” Thus, the Act generally applies to sellers
who seek to pass of their goods as the goods of another, “and not to a defendant
who has no connection to the sale of the confusingly similar goods—especially
one engaged in expressive speech.”
LV argued that Rogers
couldn’t be applied on a motion to dismiss. The court disagreed:
In the context of a motion to
dismiss, courts have disposed of trademark claims where simply looking at the
work itself, and the context in which it appears, demonstrates how implausible
it is that a viewer will be confused into believing that the plaintiff endorsed
the defendant’s work (and without relying on the likelihood of confusion
factors to do so)…. In a case such as this one, no amount of discovery will
tilt the scales in favor of the mark holder at the expense of the public’s
right to free expression.
Even if LV did allege confusion about the film, the Polaroid factors tilted against it:
The marks and products are entirely
dissimilar; Louis Vuitton and Warner Bros. are in different industries and not
in competition with each other; there is little chance that Louis Vuitton will
“bridge the gap” to movie production; there is no claim that Warner Bros.
knowingly used a knock-off when filming the movie; and moviegoers are
sophisticated enough to know that the mere presence of a brand name in a film,
especially one that is briefly and intermittently shown, does not indicate that
the brand sponsored the movie, and consumers of handbags are sophisticated enough
to know the difference between a real bag and a knock-off. Even assuming that
factor (5), actual confusion, favors Louis Vuitton, Rogers teaches that mark
owner’s must accept “some” confusion when outweighed by free speech interests.
Also, LV’s argument that there was no First Amendment
protection for using an infringing product was “without merit.”
Of course, the state law claims necessarily failed too.
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