Louis Vuitton, the French fashion house suing Warner Bros. over a handbag knockoff featured briefly in The Hangover Part II, is pointing to a notable decision two weeks ago by a New York judge to support its legal attack against the studio.On March 22, a judge granted a summary judgment victory to Louis Vuitton over a Super Bowl TV commercial produced by Hyundai that featured for approximately one second a basketball that bore resemblance to a flower-like symbol on chestnut-brown background design that was trademarked by Louis Vuitton.
The French brand says that judge’s decision two weeks ago shows why it should be able to go forward with its claims against Warner Bros. for infringing and diluting its trademark by showing, for one brief moment in the movie, Zach Galifianakis telling someone who pushes his bag, “Be careful, that is … that is a Lewis Vuitton.”
In mid-March, Warner Bros. responded to the lawsuit by telling a New York judge that it had a First Amendment right to feature trademarks and incorporate real-life references to brands without getting the consent of owners. The studio added that there wasn’t any confusion, and if there was, it was de minimis and/or the responsibility of the company that had actually produced the knockoff handbag.
Since the filing, another judge stepped up to make a ruling in a case that has a different set of facts but could nevertheless embolden Louis Vuitton’s position.
The dispute centered on a 30-second Hyundai commercial that ran during the 2010 Super Bowl postgame show that imagined a world full of designer products. Louis Vuitton contended that it violated and diluted its mark. Here’s a look at the commercial: In his decision, Judge P. Kevin Castel noted that "absent exceedingly close scrutiny, the component elements of the Louis Vuitton Toile Monogram, and their overall effect, are virtually indistinguishable from Hyundai’s stylized basketball design. Indeed, the brevity of the basketball’s appearance in the ‘Luxury’ ad, totaling approximately one second, renders it more difficult to assess the minor differences between the Louis Vuitton marks and Hyundai’s alterations. This similarity was intended by Hyundai."
The judge added that because of the close similarity, a sophisticated consumer could plausibly conclude that the design in the advertisement originated with Louis Vuitton and also rejected the automaker’s First Amendment defense grounded on its argument that it was offering a broad social critique.
Now, Louis Vuitton is using the judge’s words to prop up its lawsuit over Hangover II.
"As Judge Castel recently ruled in Louis Vuitton v. Hyundai, Louis Vuitton’s ‘aggressive’ enforcement of its trademark rights and prompt action against those who misuse its trademarks are necessary concomitants of its exclusive rights in the brand," the French company says in a court filing.
Louis Vuitton also addresses the case that Warner Bros. cited as support that the First Amendment allows a movie to reference trademarks. The case involved the film, Ginger and Fred, which the 2nd Circuit ruled was "an exercise of artistic expression rather than commercial speech" and didn’t explicitly mislead consumers into believing a film about two fictional Italian cabaret performers was about Ginger Rogers and Fred Astaire.
The plaintiff says that the determination only came after two years of factual discovery and only after the court had determined that the title had artistic relevance to the plot of the film and was truthful. Louis Vuitton says the case really provided a "balancing act" on artistic relevance and a misleading of the public and that it is too preliminary to make such a determination at this stage in the case. The company then takes a shot at Warner Bros. by saying the studio can’t decide whether the use of the Louis Vuitton product was relevant to the film’s message and says there should be inquiries into whether Warner Bros. intended to use a genuine bag or a knockoff item, which it says "would greatly affect the weight and credibility of its artistic relevance claim."
Finally, in bringing a case with claims that include "blurring" and "tarnishment" of its marks, Louis Vuitton posits that the "fleeting" appearance by a knockoff bag "actually had a major effect," using the judge’s recent decision in the Hyundai case to support the proposition. In other words, the company believes it is possible that cameo appearances of its brand and quick jokes at its expense was both harmful and illegal.