How Fashionable is the Louis Vuitton “Trademark Bully” Label?

by Winthrop & Weinstine, P.A.
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 There has been quite a flap surrounding the poster and invitation used by the University of Pennsylvania Law School to promote Penn Intellectual Property Group’s Fashion Law Symposium, scheduled for a week from tomorrow. The symposium appears to be designed as a serious affair, boasting an all-star cast of general counsel from the fashion industry, including those from Ralph Lauren, Forever 21, and Coach – to discuss in the first panel: ”Trademark and the Fast Fashion Phenomenon.” The second panel is set to discuss “Copyright for Fashion Design: Evaluating the IDPPPA.” Last, copyright scholar David Nimmer is addressing “Copyright and the Fall Line” in his keynote address, and a number of big name law firms are symposium sponsors or donors, including Kenyon & Kenyon, Fox Rothschild, Covington & Burling, and Finnegan (or, maybe not Finnegan any longer).

Louis Vuitton – owner of the likely famous trade dress and individual marks depicted on the designer bag shown above – objected to the use of the poster shown below in this cease and desist letter, and LV now has been branded a serial “trademark bully” for it (and past objections against other alleged infringements). The Penn Law School Associate Dean for Communications apparently agreed to cease use, but then the accommodation was formally withdrawn by the University’s Associate General Counsel, in this response letter, defending the poster as a clever parody. As far as I can tell, the coverage of this flap is highly critical of Louis Vuitton for sending the demand letter in the first place, and entirely in favor of the University’s final decision to not cease use; for some examples of the coverage, see Techdirt, Above the Law, Law of FashionEric Goldman’s Technology & Marketing Law Blog, The Volokh Conspiracy, Johanna Blakely, and Alison Frankel’s ON THE CASE.

While I tend to agree the tone of the LV letter was excessive, and a few carefully-placed phone calls instead of a written demand, with greatly toned down the rhetoric, likely would have been more effective, what has left me a bit surprised by the coverage of this dispute is the absence of any scrutiny of the University’s response or position.

And while some have suggested that Louis Vuitton was schooled on the law by the University and its students, I really think a closer examination reveals there are at least a few loose strings on the University’s garment.

Yet, it seems no one is asking any questions probing the University’s claimed parody, and my concern about the popular ”trademark bully” label and a social media shame-wagon approach to this issue is it sends the wrong message in that it greatly oversimplifies a very complex body of trademark parody case law — decisions that most counsel as quite unpredictable if they ever go the distance.

Like it or not, unlike the defense of federal dilution claims where certain conduct is excepted from liability, neither noncommercial use nor parody is excepted from or an affirmative defense to trademark infringement. Parody is really just another way of saying, there is no likelihood of confusion, which no one will know for sure, without credible survey evidence of the relevant public.

So, an overly harsh skeptic (not me, of course) might have paraphrased the University’s “parody defense” with a heavy dose of sarcasm: ”Louis Vuitton, can’t you take a joke? Our work is an effective and obvious parody of you, to anyone who sees it (assuming they actually notice it) – not just those who are privy to the joke. Yeah, we’re all in on it. The symposium we are promoting in this poster actually is a laughing matter, never-mind the otherwise serious topics and tone or that it has been approved for continuing legal education credits, not comedic credits. It always was and remains our intent to poke fun at and ridicule you, and just you, in your absence, of course, with even some of your competitors present, by the way, but now that you have seen it and complained, if you’d like to come, please join us for the festivities, we’ll save a special seat for you, you might actually learn something!”

I’m admittedly not familiar with prior PIPG symposiums, but it might be interesting to see promotional posters of those events, to determine whether a common theme or reputation of poking fun at third parties is present – if so, perhaps it has become a common element like the satire and parodies a reader of Mad Magazine has come to expect. Or perhaps, such history might better explain this claimed parody, as with consumers of parody pet toy products who have been found to recognize the parody from the clearly different uses and inherent incongruity. But, for the University to simply call it a clever parody, merely begs the question of whether it is an effective one, or whether it is nevertheless likely to cause confusion not only to source, but as to sponsorship, affiliation, connection, or approval, as well.

Is it not at least plausible that the modified LV artwork was designed to simply attract attention and fill seats in the auditorium, and not to make fun of LV, and that LV’s design was so meticulously reproduced that some who see it won’t even notice the subtle changes? After all, trademark parody case law certainly supports the proposition that the more outlandish, outrageous, shocking and/or offensive the parody, the less likely confusion will result. We’ll probably never know, but it wouldn’t surprise me at all – if survey evidence were pursued on these facts – to find support for an actionable level of likelihood of confusion as to LV’s sponsorship, affiliation, connection, or approval of the fashion law symposium, especially since LV noted it has sponsored such events by other schools (Fordham Law School’s Fashion Law Institute). This, it seems to me, is a key alleged fact overlooked in the Associate Dean’s response. Moreover, the focus on comparing luxury goods to educational seminars seems to miss the mark, as there appears to be a direct overlap in the sponsorship of fashion law seminars.

Other possible loose strings to tug on might be the University’s apparent belief that “lawyers, law students, and fashion industry executives who will attend the symposium” would have to believe that LV “organized” the symposium, for there to be a problem, as opposed to simply having some other connection with it, such as through sponsorship, affiliation, or approval. I also wonder about the narrowly defined scope of the relevant public, as the symposium is open to the public, and presumably more will see the poster/invitation and be influenced by it than those who actually attend.

Back to the application of the “trademark bully” label on these facts, beyond the fact that parody is not a defense to trademark infringement, it is just another way of saying, there is no likelihood of confusion, it is worth noting that the trademark parody cases are ”difficult to outline with any precision,” and “a review of the trademark parody cases gives us few bright line rules.” Indeed, some have said the trademark parody cases reflect a “barometer of both the presiding judge’s sense of humor and sense of fairness.” These cases are not black and white. Given that, and for the other reasons mentioned, the facts of this example don’t appear to me to be conducive to a label that assumes the trademark infringement claim to be frivolous or lacking any objective merit.

So, while it may be stylish to apply the shaming “trademark bully” label to Louis Vuitton, at the moment, I’m not convinced it fits, at least on these facts.

Where do you come down on this example?

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