University of Pennsylvania Law School, in preparation for a symposium on fashion law and intellectual property law, created a very clever poster to publicize the event. What did UPenn come up with? A poster which riffed on Louis Vuitton’s famous logo. The poster was done up in the same famous colors as a Louis Vuitton bag-brown and mustard yellow. However, instead of the trademark “LV’s” and flowers, the poster contained mini TM’s (for registered trademarks) and registered copyright symbols in the same font as the famous LV’s. Louis Vuitton’s reaction? Instead of appreciating the cheeky humor clearly displayed by the artwork on the poster, it sent UPenn a cease and desist letter demanding that the posters be taken down immediately (!)
Louis Vuitton’s attorney, Mr. Pantalony, claimed that UPenn:
had misappropriated and modified the LV Trademarks and Toile Monogram as the background for its invitation and poster …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 [UPenn] is sponsoring a seminar on fashion law and ‘must be experts’. People seeing the invitation/poster may believe that Louis Vuitton either sponsored the seminar or was otherwise involved, and approved the misuse of its trademarks in this manner. I would have thought [UPenn] and its faculty advisors would understand the basics of intellectual property law and know better than to infringe and dilute the famous trademarks of fashion brands, including the LV Trademarks, for a symposium on fashion law.
Instead of quaking in their boots at the sight of this letter and tearing down the posters, UPenn’s counsel subjected Mr. Pantalony to a mini-lecture on intellectual property law and lucidly explained to Louis Vuitton’s counsel why UPenn’s posters did not infringe on Louis Vuitton’s trademarks in any way, shape or form. He discussed several exceptions to trademark infringement law, including parody and use for educational purposes.
Specifically, UPenn’s counsel, Mr. Firestone, noted that:
15 U.S.C. 1125 (c) (3) expressly protects a noncommercial use of a mark and a parody from any claim for dilution.
Then Mr. Firestone tore into Louis Vuitton’s claim that the posters will cause confusion in the minds of its viewers and lead them to think that Louis Vuitton is associated with UPenn’s fashion law symposium. He also explains what is necessary to establish trademark infringement under the Lanham Act as well as the exceptions to such a finding that are relevant to the instant situation:
There also is no violation of 15 U.S.C. 1125(a) because there is no likelihood of confusion that Louis Vuitton sponsored or is associated with [UPenn’s] annual educational symposium. You assert that clever artwork parody that appears on the poster and invitation is a ‘serious willful infringement’. However, to constitute trademark infringement under the Lanham Act, [UPenn] has to be using a trademark in interstate commerce, which is substantially similar to Louis Vuitton’s mark(s), and which is likely to cause confusion between Louis Vuitton’s luxury apparel goods and [UPenn’s] educational conference among the relevant audience. First, I don’t believe that [UPenn’s] artwork parody was adopted as, or is being used as, a trademark to identify any goods and services. It is artwork on a poster to supplement text, designed to evoke some of the very issues to be discussed at the conference… Second, although you don’t cite the actual federal trademark regulations that you assert protect your marks, I doubt any of them are registered in Class 41 to cover educational symposia in intellectual property law issues. There is no substantial similarity between the goods identified by Louis Vuitton’s marks and the [UPenn] educational symposium. Third, there is no likelihood of confusion possible here. The lawyers, law students, and fashion industry executives who will attend the symposium certainly are unlikely to think that Louis Vuitton is organizing the conference; the poster clearly says that [UPenn] has organized the event…You also state that [UPenn’s] use of its artwork parody knowingly dilutes the Louis Vuitton trademarks. I disagree. First, [UPenn] has not commenced use of the artwork as a mark or trade name, which is a prerequisite for any liability under 15 U.S.C. 1125 (c) (1). More importantly, however, even if [UPenn] has used the artwork as a mark there is an explicit exception to any liability for dilution by blurring or dilution by tarnishment for ‘any noncommercial use of a mark’. 15 U.S.C. 1125 (c) (3) (C). A law student group at a non-profit university promoting its annual educational symposium is a noncommercial use. Lastly, the artwork clearly is a fair use under 15 U.S.C. 1125 (c) (3) (A) and a parody protected under 15 U.S.C. 1125 (c) (3) (A) (ii). The poster and invitation are clear that Louis Vuitton is not a sponsor of the symposium, and no reasonable person would be confused or deceived as to sponsorship, affiliation, connection or association regarding Louis Vuitton and [UPenn’s] conference, merely because of the clever artwork parody illustrating the invitation and poster.
Mr. Firestone could not resist one final dig at Louis Vuitton and its counsel. He signed off his letter with the following invitation to Mr. Pantalony: “In addition, I encourage you to attend the symposium on March 20, 2012.” Somehow, I doubt Mr. Pantalony or anyone else associated with Louis Vuitton will take Mr. Firestone up on his invitation.