District court grants defendant’s motion to dismiss trademark infringement action brought by Louis Vuitton against Warner Bros., holding that because defendant’s use of a “knock-off” version of one of plaintiff’s bags in the film The Hangover: Part II was artistically relevant, and because any confusion it might cause was due to third party’s infringing product and not to defendant’s film, defendant’s non-commercial use was protected under First Amendment freedom of expression.
Plaintiff Louis Vuitton Malletier, S.A. (Louis Vuitton), a luxury fashion house known for producing high-quality luggage and handbags with their highly distinctive trademark and its components, collectively known as the Toile Monogram, brought suit against defendant Warner Brothers Entertainment, Inc. (Warner Bros.) for its use of a “knock-off” of one of plaintiff’s bags in defendant’s 2011 motion picture The Hangover: Part II. The film featured a scene in which a character carries a bag that he describes as a “Lewis Vuitton” bag, which plaintiff alleged to be a Diophy bag, a knock-off of a Louis Vuitton product with marks infringing on the Toile Monogram.
Louis Vuitton asserted claims for trademark infringement under the Lanham Act and state law, claiming that by using the infringing Diophy bag in the film, Warner Bros. led “an appreciable number of ordinarily prudent purchasers” to believe that it was a real Louis Vuitton bag and that Louis Vuitton had sponsored or approved the use and misrepresentation of the Diophy bag as a genuine Louis Vuitton product. In addition, plaintiff claimed that by displaying the Diophy bag in the film, Warner Bros. had tarnished Louis Vuitton’s trademark and blurred its distinctiveness.
Warner Bros. moved to dismiss on the grounds that its non-commercial use of the Diophy bag was part of an “artistic work.” Under the Second Circuit’s framework in Rogers v. Grimaldi, artistic works are protected under the First Amendment protections (and the Lanham Act will not apply), where the use of the trademark is both (1) artistically relevant to the work and (2) not explicitly misleading as to the source or content of the work.
Louis Vuitton argued that the court could not determine whether the use of the bag was artistically relevant without discovery as to whether Warner Bros. had actually intended to use an authentic Louis Vuitton bag instead of the Diophy bag in the film. The court disagreed, however, finding that the bar for artistic relevance is low and would be satisfied unless defendant’s use of the Louis Vuitton mark had no artistic relevance to the film whatsoever. Because Warner Bros. indisputably intended to use a bag that appeared to be a Louis Vuitton bag and to create an artistic association with Louis Vuitton, without commercial motivation, the court concluded that the use was artistically relevant and that the requested discovery was unnecessary.
Louis Vuitton also argued that the use of the Diophy bag was explicitly misleading in that consumers would be confused as to (1) whether the Diophy bag was an authentic Louis Vuitton bag and (2) whether Louis Vuitton authorized the use of the infringing Diophy bag in the film. The court rejected this argument as well. First, the court found that the relevant inquiry was whether the use would likely cause confusion as to Louis Vuitton’s sponsorship of the defendant’s artistic work, not a third party’s work. Any confusion caused by Warner Bros. was indirect and insufficient to hold Warner Bros. liable under the Lanham Act, given the substantial First Amendment interests at stake. Second, viewers were not likely to be confused as to whether the knock-off bag was real or that Louis Vuitton authorized the use of the bag in the film because the bag appeared on screen for only a few seconds at a time and less than 30 seconds in total. Although a fictional character referred to the bag as a “Lewis Vuitton,” viewers were not likely to take such a statement seriously or attribute the character’s views to the company that produced the film.