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Mar 07 2012

Venerable Fashion House Takes on Venerable Law School as Louis Vuitton Challenges Penn Law School’s Use of It’s Design in Poster

I’m sure that the students in the University of Pennsylvania Law School’s Intellectual Property Group did not intend their upcoming Annual Symposium on Fashion Law to focus on their own poster for the event. But that will very likely be the main topic at the March 12 event, after world-renown fashion house Louis Vuitton fired off a harsh cease and desist letter to the student group objecting over the group’s use of LV’s famous background design for its symposium poster.

Penn Poster

On Feb. 29, Michael Pantalony, Louis Vuitton’s director of civil enforcement for North America, fired off a letter to the law school’s dean, Michael Fitts, about the issue. Mr. Pantalony wrote that he was “dismayed” to learn that the school group had “misappropriated and modified” the company’s trademarks in its “toile monogram.” The famous monogram is made up of the initials LV and three trademarked design elements. While the three elements are on the school’s invitation and poster, instead of LV, the poster uses the initials TM, with the T slightly above and on top of the M, the same way that the LV is arranged on LV’s products.

On March 2, Robert Firestone, the University of Pennsylvania’s associate general counsel, wrote back to Mr. Pantalony. Mr. Firestone said that the student group does not believe that the poster and invitation infringe or dilute the company’s trademarks. He properly quoted a section of the U.S. trademark code that “expressly protects a noncommercial use of a mark and a parody from any claim for dilution.” He also asserted that there is no “likelihood of confusion” that the company sponsored or is associated with the symposium.

Mr. Firestone further wrote that, in order to infringe the company’s trademarks under the Lanham Act, the school would have to be using them in interstate commerce in a way likely to cause confusion between “Louis Vuitton’s luxury apparel goods and [the student group’s] educational conference among the relevant audience.”

“It is artwork on a poster to supplement text, designed to evoke some of the very issues to be discussed at the conference, including the importance of intellectual property rights to fashion companies, the controversy over the proposed Innovative Design Protection and Piracy Prevention Act, and the exceptions in the law to liability for dilution, including parody,” Mr. Firestone wrote. Mr. Firestone further wrote that he would advise the student group that it could continue to use the posters and invitations.

So the gauntlet has been thrown down and accepted. What will LV do? If it does not follow up on its threat to bring an injunction, it will be seen as a paper tiger. If it does sue, I believe it will likely lose as under trademark law, the primary concern is “likelihood of confusion;” that is, will consumers believe that the infringing item (in this case the symposium and its poster) is a product of LV or endorsed by LV in any way. I think a reasonable person would understand that it was a cute play on a famous trademark to bring home the point about the symposium’s topic- fashion. As Mr. Firestone correctly stated “parody” is a fair use of a trademark and this also seems to be a proper parody of LV’s trademark.

But the letter from LV does highlight how trigger-happy big design houses are to protect their interests. They have been lobbying Congress for years to pass the
Innovative Design Protection and Piracy Prevention Act, which seeks to allow for copyright and trademark rights in fashion design. I believe the Act is unnecessary and will result in volumes of litigation as large companies try and quash smaller companies whose designs may play off ever so slightly on the big house’s products.

But I digress. Certainly it would have been better had the students added a small disclaimer on their poster that the use of LV’s trademark is a parody and not meant to indicate any connection between the fashion company and the symposium. I suspect that this sort of compromise will be the ultimate resolution as I can’t see either side really wanting to test this in court. If I were LV’s counsel, I don’t think I would want to take on a bevy of irate, Ivy League law students litigating their first case; I would rather take on the largest law firm in the world over that adversary.

Either way, we can expect some lively discussion at the symposium on March 20 about the meaning of fair use and the defense of parody. In an exercise of caution, let me also state that my use of the poster in this blog post is protected by the “news” and “commentary” fair use exceptions under the Lanham Act and is no way intended to indicate that this article is sponsored, promoted, derived or that it originated from Louis Vuitton or the University of Pennsylvania.

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