Most people probably walk by an advertisement without much thought beyond what’s being advertised. So, an STK ad featuring a model in Christian Louboutin heels does not raise legal questions for most of its viewers. Similarly, an album cover featuring the Louis Vuitton trademark is most frequently purchased with thoughts about the artist, not whether or not permission was granted to use the logo. But, if you’re like us, and your mind is always asking about legality, you’re in luck. We’ve got a few answers for you.

To start with, let’s look at advertisements. We’ll focus on the STK ad, but the discussion can be applied to many other advertisements using trademarks from another brand without the authorization to do so. And let’s assume for argument’s sake that the red-soled shoes in the STK ad are Louboutins (even though they could be any brand, as the red sole on an all-over red shoe is perfectly legal). We all know that the red sole is trademarked. So, unless permission was given to associate said red sole with the steak restaurant, we could be looking at the unauthorized use of another’s trademark. But is there an infringement claim? Well, that depends on one pivotal question (when it comes to trademark law): Is there consumer confusion? Louboutin is extremely protective of its trademark, so it’s not a stretch at all to assume an argument would be made that a consumer might be confused as to whether or not there was an affiliation between the Paris-based designer and STK.

Another claim that could stem from the STK advertisement is trademark dilution. As we have mentioned before, a dilution claim may only be brought if a mark is famous. There are two types of dilution: dilution by tarnishment and dilution by blurring. Both might work in the case of advertisements. There’s an argument to be made that the use of the Louboutin trademark in an ad for a restaurant opening weakens the trademark by associating it with dissimilar goods (blurring). And a persuasive claim may also be made that the red sole trademark is cast in an unflattering light (tarnishment).

Now, we move on to the discussion of trademarks on album covers, CD inserts, and in music videos. Similar to the consumer confusion with advertisements, the concern here is more that a brand is associated with or approving of the use of its trademarks, and not that a consumer is confused about the source of the goods.

Louis Vuitton brought a case on this subject a few years ago in Parisian court against Sony BMG and MTV. The French brand was concerned with a Britney Spears music video in which the singer could be seen in a car with a Louis Vuitton upholstered dashboard. The court ordered Sony BMG and MTV to stop showing the video and to each pay $117,000 in damages to Vuitton’s image, and $1,470 per day until the video was removed from the Internet. Similarly, LV reached a settlement agreement with Sony BMG because its artist Da Brat could be seen bouncing a beach ball with the LV logo in a music video and artist Ruben Studdard wore a jacket with the logo on his album’s artwork.

After these lawsuits, many wondered why Louis Vuitton was so upset. The use of its trademarks in music videos and on album covers provides free advertising, they said. The first and easiest response is that these commenters are not understanding the primary reason for a trademark. The whole point is to protect a product’s identity, so to speak. Part of this protection includes limiting and controlling when and where it is used. The second response is that maybe LV doesn’t want or need free advertising. Sure, the brand has become less exclusive than it once was, but that doesn’t mean there’s a free-for-all where its trademarks are concerned.

Also like with advertisements, a claim of dilution can be made when a trademark is used without permission related to an album and/or an artist’s music video. And once again there are arguments to be made for both types of dilution.

It’s not over yet, though. If Louboutin brought suit against STK, or if a brand wanted to protect the unauthorized use of its trademark on, say, a musician’s album cover, a likely defense is that there is First Amendment protection in the use of the trademark. While it’s hard to predict whether this defense would be successful or not, it’s definitely worth discussing.

In 1989, the Second Circuit considered whether Federico Fellini’s use of the title “Ginger and Fred” for a motion picture violated Ginger Rogers’ rights under the Lanham Act (the primary act that governs the protection of trademarks in the United States). The film, which was about a fictional Italian couple who attempt to style their dancing career after that of Fred Astaire and Ginger Rogers, suggested that Rogers sponsored, endorsed, or was otherwise involved in the film, or so the actress said.

The court found that “in general the [Lanham] Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” The court went on to note that the Act will not apply unless use of the mark at issue has “no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”

You might recall the Louis Vuitton case against Warner Brothers due to the fake LV bag carried in The Hangover: Part II. In June of 2012, Judge Andrew Carter of the Southern District of New York granted Warner Brothers’ motion to dismiss a trademark complaint filed against it by the French luxury giant.  Relying on the Rogers decision, it was found that use of the bag was artistically relevant to the movie and because viewers were not explicitly misled to believe that Louis Vuitton authorized or sponsored the use of its mark in the movie, the First Amendment was available as protection.

Compare these two cases – and the seemingly broad protection offered by the First Amendment to artistic works – to LVMH’s successful suit against Hyundai. The auto manufacturer was sued for airing a Super Bowl commercial that included a basketball with the LV logo. Judge P. Kevin Castel ruled that use of the Louis Vuitton Toile Monogram diluted LV’s trademarks and the court rejected any fair use defense.

The primary difference between this case and two aforementioned cases is that Hyundai had the overt purpose of using the mark to sell cars. To us, this means that it is more likely that a First Amendment defense will fail in the case of the STK ad, and similar ads using the trademark of another brand to sell a product. Conversely, this defense may be successful in the case of music videos and album artwork if there is an artistic purpose in using the trademark and if there is no conduct meant to mislead or confuse consumers with respect to sponsorship or affiliation. Both of these issues require a fact-specific analysis, making it hard to foresee how a court will rule.

We aren’t exactly sure why a company would decide to use the trademark of another brand without getting permission first. Especially when it comes to notoriously litigious brands like Louis Vuitton or Louboutin. Our best guess is that the decision-makers think a fair use defense will protect them. And maybe it will. But that’s not always the case and, in our opinion, doesn’t seem worth the risk.