A federal judge has dismissed Louis Vuitton Malletier SA’s trademark infringement suit against Warner Bros. Entertainment Inc. over the studio’s use of a knockoff bag in “The Hangover Part II.” U.S. District Judge Andrew L. Carter Jr. granted Warner Bros.’ motion to dismiss after finding that public confusion as to the bag’s origin was unlikely, given the nature of the use. The studio’s use of the famous brand was ultimately deemed “artistically relevant” to the movie and, therefore, deserving of First Amendment protection.
The studio’s use of the counterfeit amounts to about 30 seconds of screen time. It displays a “Hangover” character carrying a counterfeit Louis Vuitton bag through the airport, and then sitting down. While seated, the “Hangover” character instructs another character not to sit on the bag, commenting, “That is a Lewis Vuitton.” Louis Vuitton complained that such use amounts to both trademark infringement and dilution of its famous brand. Vuitton’s Complaint also noted that the studio’s movie prop was the creation of a large, wide scale counterfeiting company that Louis Vuitton seeks to shut down. Notwithstanding, the Southern District rested its decision on two touchtone trademark principles to find for Warner Bros.
First, trademark law serves to allow rights holders to use a trademark to promote their products, not to preclude another’s use of the same mark for differing purposes. Judge Carter cited an earlier Second Circuit ruling, which held that trademark law is inapplicable to creative works protected by the First Amendment. This holds true as long as the use of the trademark is artistically relevant to the work and not explicitly misleading as to the source or content of the work. Judge Carter noted that the threshold for artistic relevance is purposefully low and is satisfied unless the use of the work has no artistic relevance to the underlying work whatsoever. Clarifying further, the Southern District made clear that the use of a trademark in a creative work is only infringing when it is intended to “associate with the mark to exploit the mark’s popularity and goodwill,” and not in situations where there is an artistic, noncommercial association. As such, the studio’s use of the Louis Vuitton trademark satisfied this low threshold.
Second, trademark law seeks to prevent consumer confusion as to the offending party’s work, not as to another party’s work. Judge Carter held here that Louis Vuitton failed to state a claim for trademark infringement because they did not allege consumer confusion as to the source or content of the film, but rather only as to the source or content of the counterfeit bag in question. Notwithstanding, the Southern District goes on to note that even if Louis Vuitton stated a cognizable claim of confusion, it would fail anyway here due to First Amendment concerns. The Court explained that in the instance of artistic works, the likelihood of confusion must be “particularly compelling” to overcome the First Amendment interests at hand. Concluding, the Southern District noted that “the likelihood of confusion is at best minimal, and when balanced against the First Amendment concerns implicated here, it is not nearly significant enough to be considered ‘particularly compelling.’”
Accordingly, Judge Carter ultimately dismissed Louis Vuitton’s suit on the pleadings, concluding there remained no issue of material fact to be determined as Warner Bros. was clearly within its First Amendment rights to use the counterfeit Louis Vuitton bag in this fashion.
The case is Louis Vuitton Malletier SA v. Warner Bros. Entertainment Inc., case number 1:11-cv-09436, in the U.S. District Court for the Southern District of New York.