Reality television star and mass-market tastemaker, Kylie Jenner, made headlines yesterday when she released a promotional video her new collection of lip glosses. The video itself is a bit like a music video, albeit without an emphasis on the music. People magazine’s description of it is quite apt: “Kylie drives down a dirt road in her Rolls Royce and Louis Vuitton head scarf. When she arrives at her destination, she whips out a baby pink lip gloss. She then cues her friends, via a “gametime” text, to raid what looks to be a modern-day western drug bust. The crew flees with the cash, and we’re left to wonder what’s to come.”
Note the placement of a Louis Vuitton scarf in the video (and promotional materials for Jenner’s collection). Also note the various publications that specifically mention the Louis Vuitton brand when describing the video; People is not the only one to do so. This is the element that could be hugely problematic for Jenner in a legal sense, and rightfully so.
Few brands are as protective of their trademarks as Louis Vuitton. The Paris-based design house notoriously sued everyone from Britney Spears to Warner Bros. (the former in connection with fake Louis Vuitton print in her “Do Somethin” video and the latter in connection with the use of faux Louis Vuitton bags in The Hangover), and has not hesitated to threaten unauthorized users of authentic Louis Vuitton goods either when those goods are used in a way that might lead consumers to believe that the famed design house has approved or is in someway affiliated with the underlying usage. (Such activity arguably falls within the duty of the trademark owner to police its marks in order to avoid widespread unauthorized usage, which could lead to the genericization of the mark and its failure to operate as a trademark - aka as a source-identifying mechanism).
This will certainty prove an unpopular point for most, who will undoubtedly assert: Louis Vuitton cannot bar Jenner from wearing the scarf, which is presumably real and which she likely purchased!
Well, actually, it can. The typical claims asserted in this context are federal law claims of trademark infringement, unfair competition, and trademark dilution. In these situations, the plaintiff (Louis Vuitton in our hypothetical) typically alleges that the defendant (Kylie Jenner)’s unauthorized use of its product is likely to confuse the consumer into erroneously believing that the plaintiff sponsored or is otherwise affiliated with the project in some way and that such unauthorized usage harms the mark. And the mere use of a mark is enough to trigger consumer confusion as to sponsorship of that use.
While courts tend to vary in their rulings on fair use in general, such claims tend to be unsuccessful when the trademarked good is used in a medium that is largely based on entertainment. Products - luxury ones included - appear in various forms of entertainment all the time, and courts have often held that there tends to only be a very small likelihood of confusion amongst consumers as a result. Without a showing of likelihood of confusion, claims for trademark infringement and unfair competition will be unsuccessful.
Trademark dilution, on the other hand, does not require a showing that consumers are likely to be confused as a result of the defendant’s use of the trademark. Instead, a plaintiff must show that the unauthorized use of the mark will tarnish or harm the reputation of the original mark, or harm the ability of the mark to serve as an identifier of the plaintiff’s product.
As you may know, the Federal Trademark Dilution Act (“FTDA”) protects against two different types of dilution – dilution by “blurring” and dilution by “tarnishment.” Blurring typically refers to the whittling away of distinctiveness caused by the unauthorized use of a mark on dissimilar products. Blurring occurs when the third party’s use of the trademark decreases the likelihood that the mark will serve as a unique identifier of the owner’s product and hinder the selling power of the owner’s mark.
Tarnishment, on the other hand, negatively impacts the trademark owner’s reputation. Tarnishment involves an unauthorized use of a mark which links it to products that are of poor quality or which are portrayed in an unwholesome or distasteful context (read: in connection with sex, drugs, crime, etc.) that is likely to reflect adversely upon the owner’s product. For example, in the Coca-Cola Co. v. Gemini Rising case we learned that the defendant’s sale of posters that read “Enjoy Cocaine” (instead of Enjoy Coca-Cola) in the form of a logo that looked like the soda company’s amounts to tarnishment. Given the prevalence of guns and the strong implication of drugs in Jenner's video – a claim of dilution by tarnishment might not be a stretch.
Even if the plaintiff can establish a likelihood of consumer confusion and/or dilution (by way of tarnishment or blurring), it is not necessarily a home run, as the defendant can (and will likely) claim First Amendment protection. Courts have often held that for purely entertainment-oriented projects (such as movies or video games, for instance), the trademark owner does not have the right to control all public discourse about its marks or products, and so, the inclusion of its mark in the program may be permissible.
The difference between a movie and what we have in the case of Kylie Jenner is that the primary purpose of her video is not entertainment. It was released for the sole purpose of promoting her collection of lip glosses, for the purpose of selling her collection of lip glosses. This bodes well for Louis Vuitton's hypothetical case. Another thing that would help - if Louis Vuitton were to file suit against Jenner - the fact that Jenner is wearing the same Louis Vuitton scarf across a wide range of platforms. She appears in the scarf in a photo on her website and on her personal Twitter, Facebook, and Instagram accounts, as well as the Kylie Cosmetics social media accounts – all of which are currently being used for the promotion of the lip gloss collection. And we starting to inch closer to a likelihood of confusion.
Louis Vuitton likely will not wage an all-out war against Jenner but there is a very real possibility a cease and desist letter is being drafted as we speak. We will see if the scarf magically disappears from Jenner's promotional materials in the coming weeks …