A filmmaker’s rights under the First Amendment to use well-known trademarks for artistic and expressive purposes will be protected against a challenge from the trademark holder so long as the use has genuine relevance to the film’s storyline. On June 15, 2012 the District Court for the Southern District of New York, on a motion to dismiss, ordered Louis Vuitton’s lawyers to pack up their bags, dismissing the fashion company’s claim that a short scene in the Warner Bros’ film The Hangover Part II caused millions of dollars of damages to the company and confusion among its customers.
In a scene from the film, which is the sequel to the 2009 blockbuster about a group of friends running into trouble during a Las Vegas bachelor party, we see the character Alan in the airport carrying a bag that resembles a Louis Vuitton handbag with the markings “LVM”. Alan, played by the bearded and brilliant Zack Galifianakis, is a self-described “stay at home son,” a grown man who is comically clueless about the ways of the world and probably the furthest thing possible from the ideal spokesperson for a French luxury brand. When his bag is accidentally pushed by another character, Alan angrily admonishes him “Be careful……that is….that is a Lewis Vuitton” (mispronunciation emphasized). The entire scene lasts under 25 seconds.
Louis Vuitton’s lawsuit didn’t survive much longer.
The company alleged that Warner Bros’ use of the bag in the film constituted a violation of the Lanham Act. As the bag used in the film was not the genuine product but rather a cheap knockoff from a Chinese company called Diophy, Louis Vuitton argued that consumers were confused by this misleading use and that such use constituted trademark infringement.
In dismissing the suit, the District Court relied on Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir. 1989), the seminal decision on balancing Lanham Act and First Amendment rights, which also dealt with the use of trademarks in expressive works. Rogers stands for the proposition that “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”. Judge Andrew Carter examined the scene in question and the broader storyline of the movie and found that the use of the bag was clearly part of an artistic process related to sketching Alan as a “socially inept and comically misinformed character”.
Turning to the company’s claim that the use of a knock-off bag caused confusion as to whether or not the bag was the genuine article, Judge Carter noted that “it is highly unlikely that an appreciable number of people watching the Film would even notice that Alan’s bag is a knock-off” since the trademark appears in the background of the scene and occupies only a fraction of the frame while on screen. Additionally, Judge Carter found Louis Vuitton’s allegations that consumers might be confused as to whether the company produced or endorsed the film in light of this one scene to be as implausible as Alan’s belief during the first Hangover film that the Caesar’s Palace hotel in Las Vegas was “the real Caesar’s Palace”.
As a result, the District Court concluded, in dismissing the case that “Warner Bros’ use of the Diophy bag is protected under Rogers because it has some artistic relevance to the Film and is not explicitly misleading.”
This decision, much like the University of Alabama Board of Trustees v New Life Art Inc. case we discuss here demonstrates that, in the context of filmmaking and other bona fide artistic endeavors, the rights of a trademark owner must always be considered against the rights afforded under the First Amendment.