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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.
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
"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
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).
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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