Louis Vuitton sends a C&D letter to… Penn Law Students?

LVMH pattern (above), before parody; PENN pattern (below), after parody.

 

If you received an invitation to the Penn Intellectual Property Law Group’s annual symposium, which covers Fashion Law this year, you may have felt there was a connection to well-known luxury designer… Louis Vuitton.

(Image source: http://volokh.com and the C&D letter)

The invitation/poster includes a design a parody of the well-known Louis Vuitton pattern put together with © and ™ symbols. In response to the release of the invitation, Louis Vuitton sent a cease and desist letter to the Dean of University of Pennsylvania Law School on February 29, 2012. In it, Louis Vuitton argues the invitation was an “egregious action” that is not only “serious willful infringement” and brand dilution, but also suggests the action is “legal or constitutes ‘fair use’” because it is sanctioned by members of the legal community.

Penn Law School’s Associate General Counsel, Robert Firestone,  has already issued a response to the C&D letter, arguing that the invitation does not infringe on Louis Vuitton’s trademark. In it, Firestone raises several arguments, including:

  • The invitation does not constitute “serious willful infringement” under the Lanham Act, because the pattern is not substantially similar to Louis Vuitton’s marks and is not being used in “interstate commerce, to identify goods and services” with likelihood of confusion.
  • The invitation does not dilute the brand because the group does not use the invitation as a “mark or trade name” as required under 15 U.S.C. 1125(c)(1).
  • Even if the brand is diluted, the invitation falls under the “noncommercial use” exception under 15 U.S.C. 1125(c)(3)(C) because it is used by a law student group at a non-profit university.
  • Finally, the invitation is a “fair use” under 15 U.S.C.(c)(3)(A) and a “parody” under 15 U.S.C.(c)(3)(A)(ii).

While the law is likely on Penn Law School’s side, who also cited Louis Vuitton v. Haute Diggity Dog (507 F.3d 252) as an example of a successful trademark parody that would not cause confusion, the dispute raises some interesting issues about trademark protection for popular luxury goods and fashion brands in the United States. Maybe protecting these  ”parodies” still harms the luxury goods and fashion designers without “confusion.” Maybe potential infringement of fashion trademarks is acceptable if it is derived from a more legitimate source, like a professional artist or law school. We all know that Louis Vuitton is uniquely aggressive in the policing of its trademarks, but then again, we all know exactly what brand this invitation is a parody of… isn’t that somewhat confusing?

I love a parody as much as the next witty law student, but perhaps fashion designers with established marks deserve some additional protection. Perhaps that issue will be addressed by the author of the LVMH C&D letter, since the reply from Penn included an invitation for him to attend the symposium.  Regardless, there is likely to be a lot of lively discussion at this symposium on March 20th.  What do you think? For other opinions and links to the letters, check out these blog posts: Excesscopyright and The Volokh Conspiracy

 

 

 

2 thoughts on “Louis Vuitton sends a C&D letter to… Penn Law Students?

  1. This is an interesting case that shows that LV does not mess around!!! They are super protective of their intellectual property to the point where it is almost absurd to sue a law school for making a parody on Louis Vuitton and using the parody on the flyer. The absurd part is that the flyer is for protecting intellectual property, copyright and trademark protection and they purposely used the parody on LV to bring this point across. It was done with good intention to bring people’s awareness to these very important issues and to hold a symposium that covers fashion laws. So, for LV to try to sue Penn Law is just not cool! And to me it seems that their arguments are just ridiculous. But Penn Law did not hold back and good for them! Im sure LV has more serious issues to worry about and go after the real criminals that bring the counterfeit products into the country and dilute brand image. LV should gain some sense of humor and be able to recognize when and where to get serious and bring lawsuits. Definitely not in this case. If anything, they should thank Penn Law school for bringing attention to this ever-growing issue of counterfeiting and pointing up to LV by making a parody on their trademark pattern that LV is amongst the highest brands that are being counterfeited and more protection and careful monitoring is necessary to stop fakes!!!

  2. Pingback: Sandra Bullock Sues ToyWatch; Louis Vuitton Sends Cease and Desist to Penn Law Students; and much more! « Ponies and Peonies

Leave a Reply

Your email address will not be published.

You may use these HTML tags and attributes: <a href="" title=""> <abbr title=""> <acronym title=""> <b> <blockquote cite=""> <cite> <code> <del datetime=""> <em> <i> <q cite=""> <strike> <strong>