Opinion

Alison Frankel

Louis Vuitton and Penn offer unintended lesson in trademark law

By Alison Frankel
March 9, 2012

Is there any trademark owner with less of a sense of humor than Louis Vuitton? I thought the French fashion house couldn’t outdo its 2010 trademark case against Hyundai for a momentary glimpse of a basketball with a Vuitton-like pattern in a Superbowl ad spoofing the rich. I was wrong. Last week Louis Vuitton trademark counsel Michael Pantalony sent a cease-and-desist letter to the dean of the University of Pennsylvania Law School, demanding that Penn take down posters advertising a March 20 fashion IP symposium because the posters “misappropriated and modified” Vuitton’s trademarked monogram design.

“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,’” the letter said. (You can see the whole missive at Charles Colman‘s Law of Fashion blog.)

Seriously? Consider the audience at whom this particular poster is directed: people interested in fashion trademark issues. These are not guileless consumers who might be misled into thinking that Louis Vuitton had modified its famous monogram design to include TMs instead of LVs. They’re folks who get the joke, who understand that the clever designer who created the poster was probably riffing on Louis Vuitton’s reputation as a notoriously relentless enforcer of its mark. The layers of irony in Vuitton’s reaction to the poster are remarkable.

Appropriately, Penn associate general counsel Robert Firestone informed Louis Vuitton that the university planned to take absolutely no action in response to the cease-and-desist letter. Firestone’s March 2 letter is a mini-seminar on trademark law in its own right. The poster’s parody artwork isn’t being used to identify goods and services, Firestone wrote, and there’s no likelihood of confusion. And even in the unlikely event that Vuitton’s trademark is registered “to cover educational symposia in intellectual property law issues,” the letter said, the posters don’t dilute the mark. “[Penn] has not commenced use of the artwork as a mark or trade name, which is a prerequisite for any liability,” Firestone wrote. “More importantly, however, even if [Penn] has used the artwork as a mark, there is an explicit exception to any liability for dilution … for ‘any noncommercial use of a mark.’”

Take that, Vuitton! (I left a message for Vuitton counsel Pantalony but didn’t hear back. Firestone also didn’t respond to a request for comment.)

Fashion lawyer Colman said he’s glad Penn sent the letter because it encourages discussion of the very concerns the seminar addresses. Many recipients of cease-and-desist letters from Vuitton and other aggressive enforcers can’t afford to fight, Colman said, so use of the marks isn’t tested. Penn’s letter lays out defendants’ arguments. “It’s the perfect opportunity to air a lot of the issues surrounding trademark bullying,” he said.

UCLA Law professor David Nimmer (who’s also of counsel at Irell & Manella) is the keynote speaker at the March 20 symposium. He told me that he has circulated Vuitton’s cease-and-desist letter widely — and “it has elicited the same response of laughter wherever I’ve sent it.” Nimmer was inspired by a 1993 attempt to squelch scholarship by the assertion of IP rights to pen a 223-page law review article, so he’s something of an expert on this topic. He said Vuitton “is making a valiant effort to take the crown” for this century’s most egregious cease-and-desist letter “against scholarly pursuits.”

The whole flap appears to have backfired for Vuitton, which has brought far more attention to Penn’s poster than it would otherwise have received — and has provided plenty of fodder for discussion at the seminar.

For more of my posts, please go to Thomson Reuters News & Insight

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