— Jessica Gutierrez Alm, Attorney

A dog toy display at a local pet store caught my attention recently.

I did a double take on seeing the familiar fonts, coloring, and packaging.  Not long after, I happened to find these at a different pet store.

Once again, the familiar labels, coloring, and bottle designs caught my attention.

While certainly reminiscent of the actual brands, these all appear to be clear examples of parody.  The Chewy Vuiton case is particularly instructive here.  In that case, Louis Vuitton sued dog toy manufacturer Haute Diggity Dog for trademark infringement and dilution over a Louis Vuitton-themed dog toy.

The court held that the dog toy was indeed a successful parody, and Haute Diggity’s use of CHEWY VUITON did not constitute infringement or dilute the Louis Vuitton trademark rights.  In analyzing Haute Diggity’s parody defense, the court defined a parody as a work that (1) references the original/famous brand, (2) but makes clear that the work is not the original/famous brand, and (3) communicates some articulable element of satire, ridicule, joking, or amusement.  While recognizing the similarities between the dog toy and Louis Vuitton’s designer bags, the court also articulated several differences.  For example, the court highlighted that the dog toy is smaller, plush, and inexpensive—clear distinctions over LV purses.  The court characterized the dog toys as “simplified and crude,” rather than the “detailed and distinguished” purses.

While Jose Perro, Dr. Pooper, HeinieSniff’n and the others I recently stumbled on are probably parodies as well, they beg the question of where the parody line falls.  The Chewy Vuiton court made clear that there must be some readily identifiable differences between the original mark and the parodied work.  But how many differences are enough?

Consider the Snif peanut butter jar, for example.  While the words and the items themselves are different, there seems to be some room for suggested association between peanut butter and dog toys.  Peanut butter is frequently used as a dog treat by many owners.  Surely a dog owner might believe Jif peanut butter had entered the dog toy market.

What do you think?  Are all of these clear cases of parody like the Chewy Vuiton toys?

Although perhaps the most important question is: why are there so many dog toy parodies?

If you’re still looking for holiday gift for that special someone, the Second Circuit has your back. Fresh off the docket, the Second Circuit gave its blessing to My Other Bag’s line of parody canvas tote bags. For additional background, you can read our discussion of the District Court’s grant of summary judgment to the defendant here. However, here’s the short version: My Other Bag (“MOB”) sells canvas tote bags that cost about $30 – $60. The line of bags is a parody of the “My Other Car Is a … [BMW, Mercedes, etc.]” bumper stickers and states on one side of the bag “My Other Bag…” with a cartoonish drawing of a luxury handbag on the other side (see example below). Louis Vuitton sued, claiming the bag infringed and diluted its trademarks and also infringed its copyright in the bag design. The District Court granted summary judgment to MOB and Louis Vuitton appealed to the Second Circuit.

MOB Image

 

If Louis Vuitton hoped for a more friendly reception at the Second Circuit, the oral arguments might have been a wake up call. During the oral argument, one member of the three judge panel told told Louis Vuitton’s counsel “This is a joke. I understand you don’t get the joke. But it’s a joke.” Although statements during oral argument don’t consistently predict how a court may rule, that is not the case here. On December 22, the Second Circuit issued a summary order affirming the District Court’s grant of summary judgment on all of Louis Vuitton’s claims. Perhaps this will be the end of the road for Louis Vuitton and MOB, or maybe Louis Vuitton will seek to continue the appeal. The more interesting aspect will be to see whether Louis Vuitton adjusts its aggressive approach to trademark enforcement in light of the loss.

 

Plaintiff LVL XIII Brands Inc. (“LVL XIII”) must not have heard of the old saying:  “Never strike a king unless you are sure you shall kill him.”  The New York start-up sneaker company decided to take on fashion king Louis Vuitton over a metal plate attached to high-end men’s sneakers.  LVL XIII’s claims were dismissed last week on summary judgment in a 107 page opinion.
uuduy

Hopefully, Plaintiff LVL XIII fared better last week with its presentation during New York Fashion Week show pictured above.  You may have heard of LVL XIII sneakers, because famous people such as Jason Derulo and Chris Brown have touted the sneakers on television and in magazines.

In the lawsuit, Plaintiff alleged that Louis Vuitton was engaged in trademark infringement and unfair competition by using its rectangular metal toe plate.  Examples of the toe plates at the heart of the dispute are depicted below.hjkyudu

The Court began its analysis of the motion for summary judgment by explaining that for a trademark to have protection, it must be “distinctive.”  An “inherently distinctive” trademark is one in which “intrinsic nature serves to identify a particular source.”  Plaintiff’s mark did not meet this standard.  Accordingly, the Court had to turn to whether the mark had “acquired distinctiveness” by achieving “secondary meaning” among the relevant consumers.  This means that “in the minds of the public, the primary significance of a product feature is to identify the source (e.g., LVL XIII) rather than the product itself (e.g. the sneaker toe patch). Continue Reading Trendy Shoemaker Cannot Slay the Fashion King

A couple of weeks back, I captured this image from a t-shirt for sale in Starbucks’ backyard — at a shop in the Pike Place Market area of Seattle:

StarbucksCannabisOne of the things it brought to mind for me is the dozen year long trademark dilution case that Starbucks lost, over and over, a few years back, against a New Hampshire coffee roaster, who lawfully continues to sell its Charbucks coffee blend of beans.

It also brings to mind the difficulty of predicting the outcome of a trademark parody defense, especially since the case Tim wrote about earlier this year, highlighting Louis Vuitton’s inability to prevail in the recent My Other Bag case.

Last, at least for now, it also brings to mind the moving target of the legality of marijuana, at least at the state level, especially recognizing that Starbucks’ backyard happens to be a safe haven for doobie lovers.

Back in the day, associating the visual identity of a famous brand owner with an illegal product, was quite helpful in proving up tarnishment type damage, remember the Enjoy Cocaine posters?

Yet, with the ever-changing environment of what is legal and where, at what point will the tarnishment argument become tainted, especially with the apparent growth of First Amendment defense successes in trademark cases?

In the end, given the utter prevalence of Coca-Cola script inspired Enjoy Cocaine t-shirts available for sale online (a substance legal in no state), is the most logical explanation for a famous brand owner’s apparent tolerance best explained by the Wack-a-Mole pest and problem?

Earlier this month the Southern District of New York granted the defendant’s Motion for Summary in Louis Vuitton Malletier, S.A. v. My Other Bag , Inc. The fashion giant had brought suit against a California company over its sales of a canvas tote bag that included an image that “evoked” Louis Vuitton’s classic handbag design. An image of the Defendant’s products is shown below and you can read more about the Motion for Summary Judgment here.

 

Fresh off their victory, the Defendant My Other Bag (“MOB”) filed a Motion for Attorney’s fees just last week. MOB claims that the facts of the case render it an “exceptional” case under the Lanham Act and therefore request an award of $398,821.

In its Memorandum, MOB acknowledges that the Second Circuit normally requires a showing of “bad faith” before awarding attorney fees. However, the Supreme Court’s ruling in Octane Fitness v. Icon Health & Fitness, 134 S. Ct. 1749, 1758 (2014) rejected this interpretation of the term “exceptional,” instead finding that an exceptional case is merely one that stands out from others due to the relative merits of the claims or the litigation conduct of the parties. Although the case involved a claim of patent infringement, much of the language in the Patent Act mirrors the language of the Lanham Act and, as a result, courts regularly rely on decisions interpreting provisions of one act to interpret the other. Indeed, the Third, Fourth, and Sixth Circuits (and numerous district courts) have all recognized the applicability of Octane Fitness to requests for attorney fees under the Lanham Act.

Does MOB have a winning claim? MOB won on summary judgment on all three claims. That’s helpful, but does not mean that Louis Vuitton’s claims were weak enough to justify an award of attorney fees. Moreover, defenses of fair use or parody are particularly difficult to evaluate as courts frequently reach different conclusions on similar facts. In fact, Louis Vuitton successfully sued Hyundai Motor Co. in the same district under arguably less favorable facts (as MOB points out in its motion, though, Hyundai Motors undermined its own case with some poorly worded testimony).

Predictably, MOB also throws out the “bully” label.  This is by far the first time the label has been thrown at Louis Vuitton.  MOB argues that Louis Vuitton has pursued numerous “weak” claims, including a law school symposium’s use of the LV design on a promotional poster, a “Chewy Vuitton” dog toy, a Danish artist who placed a photograph of a child refugee holding a Louis Vuitton bag on a t-shirt (and then the painting of that photograph), other art exhibits, and the appearance of a character named “Lewis Vuitton” in the movie The Hangover II.  It certainly can’t help that Louis Vuitton appears to wear these tactics as a badge of honor, alleging in its own pleadings that it “actively and aggressively” enforces its trademark rights.

The chances of the court not adopting Octane Fitness are low, but the better question is whether the court considers the facts of the case to justify an award. It will also be interesting to see what consideration the court gives to Louis Vuitton’s perceived “bullying” tactics. When granting the Motion for Summary Judgment, the court did not seem particularly impressed with Louis Vuitton’s claims as it wondered whether the company “just cannot take a joke.” Maybe a $400,000 bill would be the perfect punchline.

Louis Vuitton is no stranger to trademark disputes. As a a manufacturer of handbags, wallets, and other luxury goods, the company has its hands full just addressing counterfeit products. However, like any other company, there is concern not just with “fakes,” but other products and services that may otherwise infringe or dilute Louis Vuitton’s trademark rights (anyone hungry for luxury waffles?). The company takes an admittedly “aggressive” approach to enforcement, sometimes resulting in criticism. For example, Louis Vuitton created controversy in the legal world with a cease and desist letter to a law school over a fashion law symposium flyer that riffed off of the LV handbag motif. While Louis Vuitton has won many legal battles, it has also lost  a few, too. Last week, the Southern District of New York added another tally to the loss column, granting summary judgment to the defendant, My Other Bag, Inc. (“MOB”) (decision available here).

Louis Vuitton sued MOB in 2014. MOB created a line of canvas tote bags that sell in the range of $30 – $55. The founder of the company provides an origin story for the brand on its website:

One fine day in sunny Los Angeles, California a designer handbag junkie found herself walking out of a grocery store with an arm full of perishables and a burning question: “if I don’t want to stuff my produce in my Prada, where can I find a stylish, Eco-conscious reusable bag?” Underwhelmed with her options, she took it upon herself to create My Other Bag: a line of Eco-friendly, sustainable tote bags playfully parodying the designer bags we love, but practical enough for everyday life.

On one side of the canvas tote bag appears the phrase “My other bag…” and on the other side appears a cartoon of a luxury handbag (with some changes to the shapes, and replacement of the LV with MOB). The bag that formed the basis for this suit is shown below (and is still up for sale on MOB’s website):

MOB Image

Louis Vuitton sued MOB, alleging trademark infringement, trademark dilution, false designation of origin, and copyright infringement. MOB moved for summary judgment on all counts, claiming that MOB’s use of an image that invoked the Louis Vuitton design was a parody and therefore a fair use.

A claim of “parody” is not a defense in and of itself, but generally qualifies as a type of fair use for copyright infringement and for claims of dilution. Section 43(c)(3) of the Lanham Act also specifically identifies “fair use” to include uses that are “parodying, criticizing, or commenting upon [a] famous mark.” With regard to trademark infringement, while there isn’t a strict “parody as fair use” defense, courts generally rely on the “defense” as a means of concluding that consumers are not likely to be confused. Defendants and applicants frequently claim that their reference to a famous mark qualifies as a fair use, with mixed results (for example, here, here, and here).

One decision frequently cited by courts to evaluate a parody defense involves a familiar name , Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007). In Haute Diggity Dog, the Fourth Circuit affirmed a finding that a pet toy manufacturer’s use of CHEWY VUITTON in connection pet chew toys constituted a parody that did not infringe Luis Vuitton’s trademark rights. That decision, and the court here, identified a parody as a work that (1) references the original/famous brand, (2) but makes clear that the work is not the original/famous brand, and (3) communicates some articulable element of satire, ridicule, joking, or amusement.

Here, the court had no trouble concluding that MOB’s bags constituted a parody. The tote clearly referenced the Louis Vuitton product through the similar design. However, MOB’s bag made clear that the bag was not a Louis Vuitton bag. As the judge noted, “the whole point is to play on the well-known “my other car . . .” joke by playfully suggesting that the carriers’ “other bag” – that is, not the bag that he or she is carrying – is a Louis Vuitton bag.”

Louis Vuitton argued that MOB’s bags  do not criticize or disparage the Louis Vuitton brand and therefore cannot be a parody. Louis Vuitton relied upon an unpublished decision in which Louis Vuitton successfully defeated a parody claim asserted by Hyundai Motor for its use of a similar design motif on a basketball in a car commercial. In that case, Louis Vuitton elicited testimony from Hyundai Motor in which it admitted that Hyundai did not intend to criticize or make fun of Louis Vuitton. The court distinguished that case (and noted that it would have declined to follow the decision any way), concluding that even vague critiques or general commentary can be sufficient to establish a parody.

In the end, the court granted summary judgment to MOB on all of its claims. The successful parody defense defeated Louis Vuitton’s claims of copyright infringement and dilution. With regard to trademark infringement, the court concluded that the parties’ products targeted different customers, were not competitive, that the purchasers of Louis Vuitton bags were sophisticated, the channels of trade distinct, and that there was a lack of any actual confusion. In summarizing the factors, the court reasoned that the “purchasing public must be credited with at least a modicum of intelligence” and concluded that the joke was so “obvious” that there could be no mistake as to source or affiliation.

This decision demonstrates the subjective nature of evaluating parody and fair use defenses. Two courts in the same district with very similar facts reached completely opposite conclusions. At first glance, I would have expected a two second clip of a basketball with a similar design in a car commercial to have a stronger argument for a parody defense than a canvas tote bag displaying a similar design (that is actually being sold). Stay tuned for coverage of any appeal, but for now, it looks like the score is Louis Vuitton 1 : Parody 2.

If you were a Band-Aid brand adhesive bandage, and you were cut, would you protect yourself?

Brent, sorry I couldn’t help myself, I’m still enjoying your Louis Vuitton waffle-maker post.

With that intro, let’s turn another page to the Genericide Watch category, here at DuetsBlog:

In focusing attention on the first item in the list shown above, to the extent Johnson & Johnson were to promote “protective surgical dressing in the form of a bandage” as the generic product name or category of the goods (the generic name listed in the USPTO record), it might be understandable that others generically and mistakenly call them “Band-Aids”  — for example, as captured most recently on this hotel’s listing of complementary commodities.

It would be kind of like using the phrase “boots equipped with longitudinally aligned rollers used for skating and skiing,” instead of the more consumer-friendly and truncated “inline skates.” Yes, we’re talking again about how the Rollerblade brand may have found itself on the watch list too.

But what if you do things right, the brand does the best it can to protect itself from the small, gradual and persistent cuts that can lead to a complete loss of exclusive trademark rights? It appears Johnson & Johnson is focused on the risk, attempting to influence consumer understanding of the brand name by even placing the all-important word “brand” into the generic product description on packaging for Band-Aid branded products and elsewhere:

The brand also promotes use of the even more truncated generic reference “bandages” when touting itself as America’s #1 Bandage Brand.

Now, for all I know, the front desk at the hotel where I recently stayed might have sent up a few Band-Aid brand adhesive bandages, had I cut myself shaving, but I didn’t test the theory. And I’m not sure it would matter in the end, at least for the purposes of our discussion here, since widespread examples like the one depicted above tend to influence the meaning of the word to consumers and probably don’t bode well for the outcome of a Teflon-style trademark genericness survey.

In the end, the majority of relevant consumers’ understanding decides the question of whether a word functions primarily as a brand or primarily as a generic designation, remember my prior discussion about the Kleenex brand?

To our marketing colleagues who might find flattery and branding success in “owning or becoming the category name,” know that there is no ownership possible once this happens. Imagine a day when 3M could label its competing products “NEXCARE Brand Band-Aids” or Medline uses labeling reading: “CURAD Brand Band-Aids.” Would you really want to be the brand manager explaining — at the brand’s funeral — how this death to commodity status helps the brand at that point?

Perhaps this is the most vivid and compelling illustration of why some trademark types refer to the trademark genericide problem as “death by a thousand cuts.”

About a week ago I had the honor and pleasure of once again presenting the annual trademark review at the 11th Annual Midwest IP Institute in Minneapolis, Minnesota, with good friend and trademark guru Paul Mussell. And happily, TTABlogger John Welch once again graciously contributed the IP Book chapter on the Top Ten TTAB Cases.

One of the points I made that seemed to resonate with those in attendance is the heightened need for “trademark civility” — in our current environment of so-called “trademark bullying,” or “trademark hooliganism,” as trademark infringement claims and demands are scrutinized on a daily basis in the media. It (the media, that is), certainly loves to devour a good David & Goliath story, and since everyone following these stories is a consumer, it’s not hard to have a strong opinion on whether an alleged case of consumer confusion is even plausible, which can lead to social media attacks on the brand owner and negative amplification of their trademark demands, a phenomenon Erik Pelton has been calling “The Streisand Effect.”

As a result, form and tone are becoming every bit as important as the actual substance of the trademark cease and desist letters. As you may recall, a while back, Derek Allen discussed the harsh language often contained in cease and desist letters, in his post titled “How to respond to demand letters.” More recently, Sharon Armstrong wrote about the U.S. Olympic Committee’s demand letter antics, later apology, and provided: A Lesson in Cease-and-Desist Manners.

One of the worst examples I’ve seen over the last year, illustrating the need for trademark civility in cease and desist correspondence, is the bombastic and sarcastic demand letter sent by Louis Vuitton to the dean of the UPenn law school, as discussed in: How Fashionable is the Louis Vuitton “Trademark Bully” Label?

I’m left wondering whether the aggressive and condescending tone of the LV demand letter played an important role in why the law school’s initial decision to pull the poster in question was so promptly and vehemently reversed, upon further consideration. No one likes to be slammed into a corner. No one likes to be insulted. Especially lawyers, legal scholars, and budding lawyers. And, honey certainly goes much farther in attracting bees than piss and vinegar. So, I’m thinking that we all improve the respective positions of our clients when the bravado is shed, and when we keep the matches away from the gasoline — we don’t need to agree on our respective positions, but we can disagree and isolate the issues separating us more productively and effectively when we elevate the discussion in a respectful manner.

A road-map for success when pursuing trademark enforcement activities might be to consider carefully proof-reading draft demand letters (after it has been determined a phone call won’t do the job) to remove emotionally-charged language, resisting the temptation to expressly impute bad faith and motives (without evidence), leaving just the bare and necessary facts to justify the professional and respectful request that the enforcement target change its direction or actions, so that any further fuss and/or litigation can be avoided.

In the end, one of the most important points to keep in mind about knowing your audience, when reaching out to trademark enforcement targets, especially in our highly-charged current digital environment, is that the entire world is your audience, not just the present object of your current frustration.

For further reading on the subject, consider these related oldies, but goodies:

The current series of advertising billboards from Allianz — an international financial services company, with its parent company headquartered in Munich, Germany — are really wonderful, and their creativity inspired this post about brand name pronunciation. Here is one billboard example I recently captured in Minneapolis with my iPad, to the left.

How we pronounce words, names, places, and brand names can make a difference. Often the difference reveals whether you’re an insider or an outsider. For example, when you mispronounce my name, you prove you really don’t know me. In addition, to the extent there is one “correct” pronunciation of a word, place or brand name, saying it the “wrong” way can lead to humor and sometimes ridicule — at least for those who know how to say it “right” and are proud of it.

There were always good chuckles as a child when one of our grandmothers who visited us from east of the Mississippi would refer to the capital of Iowa as “Dez Moinez.” All things considered, she probably enjoyed outsider status. And I have no doubt that my wife and I were the butt of jokes when we arrived in Minneapolis more than twenty years ago, asking how to get to Wayzata, but calling it Way-zata, instead of Why-zetta (and, no, we didn’t learn how to incorrectly pronounce the town name from the erroneous references in Beverly Hills 90210).

Consider your last dining experience where a separate menu and wine list was left with your table already adorned with a white tablecloth and crystal stemware. Seems like some of the menu items and wine names exist for the sole purpose of making you feel like an outsider, at least at first blush. I still remember my first experiences with Gnocchi, Foie Gras, and Bruschetta. Restaurants that actually number their wine selections are especially kind to outsiders, no?

What about brand names, have you ever felt like an outsider when exposed to a new brand for the first time? Has humor ever surrounded the mispronunciation of a brand name, in your experience? To the extent Pronounce It Right is a reliable and accurate online pronunciation resource, many Americans regularly butcher the “proper” or “correct” pronunciation of many brand names — especially those originating outside the United States, brands such as Porsche, Yves Saint Laurent, Bvlgari, Christian Louboutin, and Louis Vuitton. Yet, PronunciationHub purports to offer “the single and correct pronunciation of this word” for Porsche, which still seems a bit Americanized, but probably less Americanized than how most say Volkswagen. It nevertheless acknowledges two versions for Nike, the European version and the American version. Finally, for what it’s worth, I’ve never heard anyone pronounce Chipotle Mexican Grill this way: Ship-uh-lay.

After South Korean automaker Hyundai’s Genesis model won North American Car of the Year, it ran this clever 2009 Superbowl 30 second television advertisement: “Win one little award and suddenly everyone gets your name right: It’s Hyundai, like Sunday.” Apparently PronunciationHub didn’t get the memo, as it’s Hi-Un-Dye to them.

What about trademarks? Well, if you regularly feel like an outsider when it comes to being corrected about proper brand name pronunciation, become a trademark type, where you can earn a living in a world where, you’ll be comforted to know, there is no “correct” way to pronounce a trademark, as the USPTO’s Trademark Manual of Examining Procedure (TMEP Section 1207.01(b)(v)) teaches:

“Similarity in sound is one factor in determining whether there is a likelihood of confusion between marks. There is no “correct” pronunciation of a trademark because it is impossible to predict how the public will pronounce a particular mark. Therefore, “correct” pronunciation cannot be relied on to avoid a likelihood of confusion. See, e.g., Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985) (SEYCOS and design for watches held likely to be confused with SEIKO for watches and clocks); In re Great Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985) (CAYNA (stylized) for soft drinks held likely to be confused with CANA for, inter alia, canned and frozen fruit and vegetable juices); In re Energy Telecommunications & Electrical Association, 222 USPQ 350 (TTAB 1983) (ENTELEC and design for association services in the telecommunication andenergy industries held likely to be confused with INTELECT for conducting expositions for the electrical industry); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963) (CRESCO and design for leather jackets held likely to be confused with KRESSCO for hosiery).”

So, while there may very well be valid branding and marketing reasons to develop a “correct” pronunciation for a brand name, as some of the examples demonstrate, there will still be a wide variety of pronunciations adopted by consumers, probably explaining why the USPTO has determined there is no such thing as a “correct” pronunciation, at least when it comes to comparing marks as part of a likelihood of confusion analysis.

For other DuetsBlog guest posts discussing the pronunciation of brand names, consider these: Nancy Friedman’s That Story About the Chevy Nova? It’s a No Go, Mark Prus’ Sonic Bimbo, Nancy Friedman’s “Los Doyers” Goes Legit. Are You Cheering?, and Mark Prus’ Seemed Like a Good Idea at the Time…

There has been quite a flap surrounding the poster and invitation used by the University of Pennsylvania Law School to promote Penn Intellectual Property Group’s Fashion Law Symposium, scheduled for a week from tomorrow. The symposium appears to be designed as a serious affair, boasting an all-star cast of general counsel from the fashion industry, including those from Ralph Lauren, Forever 21, and Coach — to discuss in the first panel: “Trademark and the Fast Fashion Phenomenon.” The second panel is set to discuss “Copyright for Fashion Design: Evaluating the IDPPPA.” Last, copyright scholar David Nimmer is addressing “Copyright and the Fall Line” in his keynote address, and a number of big name law firms are symposium sponsors or donors, including Kenyon & Kenyon, Fox Rothschild, Covington & Burling, and Finnegan (or, maybe not Finnegan any longer).

Louis Vuitton — owner of the likely famous trade dress and individual marks depicted on the designer bag shown above — objected to the use of the poster shown below in this cease and desist letter, and LV now has been branded a serial “trademark bully” for it (and past objections against other alleged infringements). The Penn Law School Associate Dean for Communications apparently agreed to cease use, but then the accommodation was formally withdrawn by the University’s Associate General Counsel, in this response letter, defending the poster as a clever parody. As far as I can tell, the coverage of this flap is highly critical of Louis Vuitton for sending the demand letter in the first place, and entirely in favor of the University’s final decision to not cease use; for some examples of the coverage, see Techdirt, Above the Law, Law of FashionEric Goldman’s Technology & Marketing Law Blog, The Volokh Conspiracy, Johanna Blakely, and Alison Frankel’s ON THE CASE.

While I tend to agree the tone of the LV letter was excessive, and a few carefully-placed phone calls instead of a written demand, with greatly toned down the rhetoric, likely would have been more effective, what has left me a bit surprised by the coverage of this dispute is the absence of any scrutiny of the University’s response or position.

And while some have suggested that Louis Vuitton was schooled on the law by the University and its students, I really think a closer examination reveals there are at least a few loose strings on the University’s garment.

Yet, it seems no one is asking any questions probing the University’s claimed parody, and my concern about the popular “trademark bully” label and a social media shame-wagon approach to this issue is it sends the wrong message in that it greatly oversimplifies a very complex body of trademark parody case law — decisions that most counsel as quite unpredictable if they ever go the distance.

Like it or not, unlike the defense of federal dilution claims where certain conduct is excepted from liability, neither noncommercial use nor parody is excepted from or an affirmative defense to trademark infringement. Parody is really just another way of saying, there is no likelihood of confusion, which no one will know for sure, without credible survey evidence of the relevant public.

So, an overly harsh skeptic (not me, of course) might have paraphrased the University’s “parody defense” with a heavy dose of sarcasm: “Louis Vuitton, can’t you take a joke? Our work is an effective and obvious parody of you, to anyone who sees it (assuming they actually notice it) — not just those who are privy to the joke. Yeah, we’re all in on it. The symposium we are promoting in this poster actually is a laughing matter, never-mind the otherwise serious topics and tone or that it has been approved for continuing legal education credits, not comedic credits. It always was and remains our intent to poke fun at and ridicule you, and just you, in your absence, of course, with even some of your competitors present, by the way, but now that you have seen it and complained, if you’d like to come, please join us for the festivities, we’ll save a special seat for you, you might actually learn something!”

I’m admittedly not familiar with prior PIPG symposiums, but it might be interesting to see promotional posters of those events, to determine whether a common theme or reputation of poking fun at third parties is present — if so, perhaps it has become a common element like the satire and parodies a reader of Mad Magazine has come to expect. Or perhaps, such history might better explain this claimed parody, as with consumers of parody pet toy products who have been found to recognize the parody from the clearly different uses and inherent incongruity. But, for the University to simply call it a clever parody, merely begs the question of whether it is an effective one, or whether it is nevertheless likely to cause confusion not only to source, but as to sponsorship, affiliation, connection, or approval, as well.

Is it not at least plausible that the modified LV artwork was designed to simply attract attention and fill seats in the auditorium, and not to make fun of LV, and that LV’s design was so meticulously reproduced that some who see it won’t even notice the subtle changes? After all, trademark parody case law certainly supports the proposition that the more outlandish, outrageous, shocking and/or offensive the parody, the less likely confusion will result. We’ll probably never know, but it wouldn’t surprise me at all — if survey evidence were pursued on these facts — to find support for an actionable level of likelihood of confusion as to LV’s sponsorship, affiliation, connection, or approval of the fashion law symposium, especially since LV noted it has sponsored such events by other schools (Fordham Law School’s Fashion Law Institute). This, it seems to me, is a key alleged fact overlooked in the Associate Dean’s response. Moreover, the focus on comparing luxury goods to educational seminars seems to miss the mark, as there appears to be a direct overlap in the sponsorship of fashion law seminars.

Other possible loose strings to tug on might be the University’s apparent belief that “lawyers, law students, and fashion industry executives who will attend the symposium” would have to believe that LV “organized” the symposium, for there to be a problem, as opposed to simply having some other connection with it, such as through sponsorship, affiliation, or approval. I also wonder about the narrowly defined scope of the relevant public, as the symposium is open to the public, and presumably more will see the poster/invitation and be influenced by it than those who actually attend.

Back to the application of the “trademark bully” label on these facts, beyond the fact that parody is not a defense to trademark infringement, it is just another way of saying, there is no likelihood of confusion, it is worth noting that the trademark parody cases are “difficult to outline with any precision,” and “a review of the trademark parody cases gives us few bright line rules.” Indeed, some have said the trademark parody cases reflect a “barometer of both the presiding judge’s sense of humor and sense of fairness.” These cases are not black and white. Given that, and for the other reasons mentioned, the facts of this example don’t appear to me to be conducive to a label that assumes the trademark infringement claim to be frivolous or lacking any objective merit.

So, while it may be stylish to apply the shaming “trademark bully” label to Louis Vuitton, at the moment, I’m not convinced it fits, at least on these facts.

Where do you come down on this example?