In the wake of the 2010 Super Bowl, Louis Vuitton was not amused. In particular, the powers that be at the world’s largest luxury brand were put off by one particular commercial that ran during the post-game show on television’s most-watched night: a Hyundai Motors advertisement for the Seoul-based car company’s $20,000 Sonata sedan. The 30-second “Luxury”-titled commercial prompted Louis Vuitton to file a trademark infringement and dilution lawsuit in a New York federal court not all that long after the two teams left the Super Bowl field that evening.
In its complaint, Louis Vuitton alleged that in the commercial – which depicted short vignettes juxtaposing everyday scenarios with luxury ones (think: cops eating caviar in their squad cars), along with a voice-over that asked: “What if we made luxury available to everyone?” – Hyundai used a basketball covered in what appeared to be its world-famous Toile Monogram. The carmaker’s unauthorized use of the monogram as part of the commercial “intentionally creates confusion” among consumers, Louis Vuitton argued.
To be specific, counsel for the luxury brand asserted that Hyundai’s use of a print that mimicked its monogram – a brown and gold print that consists of “three distinctive elemental designs: a pinwheel design, a diamond with an inset pinwheel design, and a circle with an inset flower design” – created the impression that the luxury goods brand and the South Korean multinational automotive manufacturer were in some way connected or affiliated, or that Louis Vuitton had authorized such usage of its trademark-protected print, when that was, in fact, not the case.
The “Louis Vuitton” basketball appeared on screen for a total of 4 seconds, and yet, Louis Vuitton argued that in part because of the expansive viewership of the Super Bowl (“tens of millions” of Super Bowl viewers and an “untold number” of online viewers saw the commercial), the ad diluted and infringed its instantly-recognizable trademarks, thereby, causing harm to the brand.
Hyundai fought back, asserting that its use of the lookalike trademarks should not give rise to infringement liability because such use was for the purpose of “a humorous, socio-economic commentary on luxury defined by a premium price tag, rather than by the value to the consumer,” and thus, should be protected as a parody. More than that, the carmaker argued that any associated created as a result of its use of the trademarks was purely expressive and thus, would not damage the distinctiveness of Louis Vuitton marks or the reputation of the brand as a whole.
The court, however, was not convinced. In March 2012, the Southern District of New York preliminarily sided with Louis Vuitton in response to a motion for summary judgment in connection with the trademark dilution claim. According to the court, testimony from one of Hyundai’s marketing executives established that if anything, the commercial amounted to a satire – a commentary on society’s relationship with luxury – as opposed to a parody, (i.e., a commentary about Louis Vuitton’s brand).
Because an executive for Hyundai admitted that the car company had no intention for the commercial to make any statement about Louis Vuitton or its products, in particular, but instead, of luxury products and/or purveyors as an entire industry/practice, the court concluded that Hyundai maintained no intent to parody, criticize or comment upon Louis Vuitton, which it held is required in order to prevail on such a defense. On the other hand, it held that in accordance with the Trademark Dilution Revision Act’s six factor statutory test, Louis Vuitton had sufficiently made its case for dilution by blurring.
Hyundai similarly moved for summary judgment, asking the court to toss out all of the claims that Louis Vuitton lodged against it but the court refused to do so, and instead, determined that those issues would be dealt with at trial.
The parties ultimately managed to settle the matter out of court in July 2012 and avoid a trial, which was scheduled to begin that month.
As for the winner in this case, while it is, factually speaking, Louis Vuitton, no small number of experts have refused to shy away from calling out the brand for such aggressive legal prowess. As Eric Goldman noted on his own site, Louis Vuitton “should be thanking (not suing) Hyundai for showing them the enthusiastic market demand for such an item,” i.e., a Louis Vuitton-printed basketball. “But Louis Vuitton doesn’t roll that way,” he asserts, “preferring to sue anyone who depicts the logo in unexpected contexts.”
*The case was Louis Vuitton Malletier, S.A. v. Hyundai Motor America, 1:10-cv-01611 (SDNY).