image via Penn

image via Penn

An ugly legal squabble is underway, pitting high fashion against higer education. It started when the Penn Intellectual Property Group—a student club—began to publicize its March 20, 2012 symposium on fashion law. In making use of Louis Vuitton’s well-known toile monogram logo, the IP group caught the attention of Louis Vuitton’s director or civil enforcement Michael Pantalony, who sent a strongly-worded cease and desist order to the school’s dean.

In the letter, Pantalony describes the long history of the toile monogram logo, which dates back to the 1850s, and asserts that not only is use of its monogram the poster “an egregious action [and] a serious willful infringement and knowingly dilutes the LV trademarks,” it night also “mislead others into thinking that 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.”

Ultimately, he admonishes the school to “stop all use… of the infringing” poster.

Reflecting on Pantalony’s letter, Reuters’ Alison Frankel wondered aloud, “Seriously?” Specifically addressing the likelihood of confusion issue, she wrote: “Consider the audience at whom this particular poster is directed: people interested in fashion trademark issues. These are not guileless consumers who might be misled into thinking that Louis Vuitton had modified its famous monogram design to include TMs instead of LVs. They’re folks who get the joke, who understand that the clever designer who created the poster was probably riffing on Louis Vuitton’s reputation as a notoriously relentless enforcer of its mark.”

In short, she stated, “The layers of irony in Vuitton’s reaction to the poster are remarkable,” and Robert Firestone, the University’s Associate General Counsel, seemed to agreed.

In a response letter dated March 2, Firestone informed Louis Vuitton that it would take absolutely no action in connection with the brand’s demands, and opted, instead, to use his letter to education Pantalony on trademark 101. “The poster’s parody artwork isn’t being used to identify goods and services, Firestone wrote, and there’s no likelihood of confusion. And even in the unlikely event that Vuitton’s trademark is registered ‘to cover educational symposia in intellectual property law issues,’ the letter said, the posters don’t dilute the mark.”

The law school “has not commenced use of the artwork as a mark or trade name, which is a prerequisite for any liability,” Firestone wrote. And “more importantly, even if [Penn] has used the artwork as a mark, there is an explicit exception to any liability for dilution … for ‘any noncommercial use of a mark.’”

The LV v. Law School battle has been the subject of widespread media attention, in largely part because Louis Vuitton has been on something of a trademark tear as of late. Or, as New York-based firm Garson, Segal, Steinmetz, Floodgate LLP states, the latest fight “stands out as an example (in many lawyers’ opinion) of the trend over the past couple of decades toward overbroad readings of IP protections.”

For instance, Louis Vuitton was ridiculed in the legal media for its 2010 suit against Hyundai for a television commercial. That commercial’s premise was to show luxury items being used in everyday, non-luxury settings—police officers eating caviar, yachts in driveways, etc. The ad showed a child playing with a “luxury basketball” with something looking like Louis Vuitton’s mark imprinted on it.

The “Louis Vuitton” basketball appeared on screen for a total of 4 seconds. Yet, Louis Vuitton filed suit, alleging that the carmaker’s unauthorized use of the monogram as part of the commercial “intentionally creates confusion” among consumers and 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. 

The suit – which ultimately saw the parties settle out of court in July 2012 and avoid a trial, which was scheduled to begin that month – prompted critics to call foul, claiming that no consumer could possibly be confused over the sponsorship of the commercial. In fact, 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.”

In closing and with policy debates aside, it is worth wondering, per Garson, Segal, Steinmetz, Floodgate LLP:  What exactly did Louis Vuitton 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, they say, Louis Vuitton’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.