Louis Vuitton v. U Penn

Nothing is juicier than the squabbles of the elite. At least that would explain the recent national obsession with Downton Abbey. In keeping with that maxim, a squabble between luxury fashion designer Louis Vuitton (LV) and the University of Pennsylvania caught our eye this week.

It started when the Penn Intellectual Property Group—a student club—began to publicize its March 20, 2012 symposium on fashion law. Law students and scholars have been paying closer attention to fashion law lately. (So has the general public, particularly as the “red sole” shoe case unfolds between LV and Louboutin. The underlying issue there is whether or not Louboutin’s well-known red soles can constitute a trademark). Anyway, the students at Penn organized an event on such emerging legal issues in the fashion industry, very similar to events organized recently by other elite law schools. The students aim to bring together IP professors, general counsels of fashion companies, and attorneys in private practice.

So what was the problem? The students had the nerve to use Louis Vuitton’s well-known toile monogram logo on its poster advertising the event. LV’s counsel did not approve. Indeed, Michael Pantalony sent a harshly worded cease and desist order to the school’s dean. Pantalony calls the poster an “egregious action” that “is not only a serious willful infringement and knowingly dilutes the LV Trademarks, but also may mislead others into thinking this type of unlawful activity is somehow ‘legal’ or constitutes ‘fair use’ because the Penn Intellectual Property Group is sponsoring a seminar on fashion law and “must be experts.’” Pantalony’s letter describes the long history of the toile monogram logo, which dates back to the 1850s, and admonishes the school to “stop all use… of the infringing” poster.

Keep in mind: This symposium was not targeted at normal fashion consumers likely to be confused about LV’s sponsorship, nor was it even targeted at the general public. The audience is highly educated intellectual property lawyers and students—people who understand the issues thoroughly. Enforcement of marks such as LV’s is precisely a topic of the academic symposium. Isn’t there an Alanis Morissette song about this?

Anyway, while some (or most) recipients of such a harsh cease and desist letter would take the hint and change the poster, the University of Pennsylvania was not so fragile. Robert Firestone, the University’s Associate General Counsel, replied on March 2 to LV’s letter with essentially a short treatise on trademark law 101. The poster, Firestone reminded the company, was not used to identify goods and services, nor was it being used in any sort of interstate commerce. Those two facts alone, he argues, stop both LV’s claim of confusion and its claim of dilution in their tracks. Indeed, the Lanham Act “expressly protects a noncommercial use of a mark and a parody from any claim for dilution.” In order to infringe the company’s trademarks under the Lanham Act, Penn 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.”

Firestone ended his letter in a gutsy fashion, not only saying that he would advise the students to continue using the posters, but also inviting Mr. Pantalony to attend the event. “The students have invited some of the in-house counsel from some of your peer fashion companies to speak on the panels, and I am sure the students would welcome your attendance as well.” Pantalony’s RSVP will probably got lost in the mail.

This case got quite a bit of attention, partly because the dispute stands out as an example (in many lawyers’ opinion) of the trend over the past couple of decades toward overbroad readings of IP protections. LV was ridiculed on the blawgs for its 2010 suit against Hyundai for a television commercial. That commercial’s premise was to show luxury items being used in normal middle class settings—police officers eating caviar, yachts in driveways, etc. The ad showed a child playing with a “luxury basketball” with something looking like LV’s mark imprinted on the side. LV sued claiming that there would be consumer confusion under the Lanham Act. You can see the offending basketball here; you might barely notice it by just watching the commercial. Many critics complained that no consumer could possibly be confused over the sponsorship of the commercial. Who would reasonably believe that a) LV was somehow involved in Hyundai cars, or b) that they had actually expanded into the basketball business?

We certainly do not begrudge LV—or anyone else—the right to protect their intellectual property. Quite the opposite; we’re here to help businesses and individuals do just that. But that said, we cannot help but wonder whether certain companies are becoming overly aggressive in enforcing IP protections in ways that do not advance their underlying business interests. Lets remember, policy debates aside, IP protection exists to protect core business interests. What exactly did LV have to gain by trying to intimidate a group of law students? Did that poster really interfere with the company’s ability to sell bags, or the strength of its trademark in the marketplace? Ironically, LV’s cease and desist letter got so much attention that the “egregious” poster was probably seen far more than it otherwise would have been. And it also generated plenty of negative public relations. This is a good example of why legal interests, business interests, and PR interests should always be considered in tandem.

Brian Farkas