Louis Vuitton and The Hangover II: A Trademark Battle between Beauty and the Beast

How come The Hangover II can't keep its grubby mitts out of IP law. Last year, the movie did a bit of copyright battle with Mike Tyson's tattoo artist. That makes a little sense; boxing, tattoos and hangovers might fit into some sort of loose narrative. But could anyone have pictured The Hangover II locking trademark horns with prim and proper Louis Vuitton? Last Friday, that strange marriage came to an end.

Bachelor Parties and Handbags: An Odd Plot Line

Louis Vuitton's trademark beef with Warner Brothers/The Hangover II stems from the movie's airport scene, in which the main characters are:

"in Los Angeles International  Airport before a flight to Thailand for the character Stu's bachelor party and wedding." "[A]s the characters are walking through the airport, a porter is pushing on a dolly what appears to be Louis Vuitton trunks, some hard-sided luggage, and two Louis Vuitton Keepall travel bags." Alan, one of the characters, is carrying what appears to be a matching over-the-shoulder Louis Vuitton "Keepall" bag, but it is actually an infringing Diophy bag. Moments later, Alan is seen sitting on a bench in the airport lounge and places his bag (i.e., the Diophy bag) on the empty seat next to him. Stu, who is sitting in the chair to the other side of the bag, moves the bag so that Teddy, Stu's future brother-in-law, can sit down between him and Alan. Alan reacts by saying: "Careful that is . . . that is a Lewis Vuitton." No other reference to Louis Vuitton or the Diophy bag is made after this point.

Vuitton v. Warner Bros. Entm't, 2012 U.S. Dist. LEXIS 83646, *3 -*4 (D.N.Y. 2012) [enhanced version available to lexis.com subscribers] (footnotes and citations omitted).

Louis Vuitton was none too happy to see the Diophy knock-off and sued Warner Brothers for trademark infringement. Louis Vuitton's complaint alleged that:

"many consumers believed the Diophy [b]ag" used in the Film "was, in fact, a genuine Louis Vuitton," and that Louis Vuitton consented to Warner Bros.' "misrepresentation" that the Diophy bag was a genuine Louis Vuitton product. Louis Vuitton claims that its harm has been "exacerbated by the prominent use of the aforementioned scenes and the LVM Marks in commercials and advertisements for the [F]ilm," and that Alan's "Lewis Vuitton" line has "become an oft-repeated and hallmark quote from the movie."

Id. at *5 (citations omitted).

The Hangover II and Its Not-So Obvious Link to the Constitution

Warner Brothers moved to dismiss on the ground that its use of the Diophy bag in the film was protected by the First Amendment under the framework established by Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) [enhanced version available to lexis.com subscribers]. Last week, the Southern District of New York granted Warner Brothers' motion.

The court held that Warner Bros.' use of the Diophy bag met the low threshold for Rogers' "artistic relevance" prong. Use of the Diophy bag (whether intentional or inadvertent) was intended to create an artistic (as opposed to commercial ) association with Louis Vuitton. In discussing the plot, the court noted:

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.  This scene also introduces the comedic tension between Alan and Teddy that appears throughout the Film.

Vuitton, 2012 U.S. Dist. LEXIS at *14-*15 (footnotes and citations omitted).

Addressing Rogers' second prong - use of the mark is not explicitly misleading as to the source or content of the work - Louis Vuitton argued that the prong was not limited to confusion as to the source or content of the film, but rather, extended to confusion as to the source or content of a third-party's goods. The court rejected this argument:

Here, the complaint alleges two distinct 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. However, even drawing all reasonable inferences in the light most favorable to Louis Vuitton, as the Court is required to do, neither of these allegations involves confusion as to Warner Bros.' artistic work. Specifically, 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. 

Id. at *25.

In a bit of dicta, the court went on to note:

Under the expansive view Louis Vuitton advances, Warner Bros. would be liable-not for identifying its own product with the LVM Marks-but for identifying the Diophy bag with the LVM Marks or, alternatively, for implying that Louis Vuitton approved the use of the Diophy bag in the Film. The public's interest in avoiding consumer confusion (assuming the Lanham Act covers this type of confusion) is not so great as to overcome the significant threats to free expression from holding Warner Bros. liable for its 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. Any confusion created by Warner Bros. is at most indirect and thus "too slight to warrant application of the Lanham Act."

....

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. 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.

Id. at *28-*33 (footnotes and citations omitted). 

....

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