First Amendment bars infringement and dilution claims based on use in Hangover movie

The US District Court for the Southern District of New York has dismissed Louis Vuitton Malletier SA's claims arising from the appearance of a knock-off Louis Vuitton bag in the movie The Hangover: Part II.

Louis Vuitton sued Warner Brothers Entertainment Inc under the Lanham Act for trademark infringement and unfair competition, and under New York law for trademark dilution. All of the claims arose from an early scene in The Hangover: Part II as the four main characters are waiting for a flight at Los Angeles International Airport.  

As alleged in the complaint, the scene precipitating the lawsuit featured a knockoff Louis Vuitton 'Keepall' travel bag. In this regard, a character in the movie named Alan places his Keepall bag on the seat next to him. Another character moves the bag to allow a third character to sit next to him. Alan, using a mispronunciation, calls the bag a 'Lewis Vuitton' bag, cautioning the character that moved the bag: “Careful … that is a Lewis Vuitton.” Louis Vuitton alleged that the line has “become an oft-repeated and hallmark quote from the movie”. No other reference to Louis Vuitton, 'Lewis Vuitton' or any infringing depiction of the Keepall travel bag is alleged to have been made in the movie.

The District Court for the Southern District of New York, on Warner Bros’ motion to dismiss the complaint, granted the motion and dismissed Louis Vuitton’s claims in their entirety as a matter of law. Its decision rested on the First Amendment, which protects artistic works from claims of infringement, unfair competition and dilution if a two-part test is met. In reaching its decision, the court specifically noted that, based on the complaint, the case was not about Warner Bros misleading the public into believing that Louis Vuitton sponsored or was affiliated with the film.  The court also expressly recognised the fame of Louis Vuitton's marks but, despite that fame, rejected Louis Vuitton’s claims.

Even with trademark fame, the court held that the First Amendment controls under the Second Circuit’s Rogers v Grimaldi decision, which ruled on trademark infringement claims arising from use in a movie’s title of 'Ginger and Fred'. That case established a two-part test to fall within the protections of the First Amendment. First, the use of the mark must be "artistically relevant to the work". Second, the use of the mark must not be "explicitly misleading" as to the source or contents of the work. 

In this case, there was no question that the work was non-commercial so the first prong of the Rogers v Grimaldi test was met on the face of the complaint. It has long been established that motion pictures are protected speech.  Commercial speech is “speech that does no more than propose a commercial transaction”, which is not the object of a film not selling any product. Moreover, the court rejected the notion that discovery was needed on this point or whether there was artistic relevance for the reference in question. The court noted that the scene is funny because Alan mispronounces the name and is ironic since the character cannot even correctly pronounce the name of one of the expensive possessions he supposedly owns. This alone establishes relevance. As a result, the court focused on the second prong of the analysis - whether the use of the knock-off bag “explicitly misleads as to the source or the content of the work”.

As to this prong, the court recognised that only a “particularly compelling” finding of likelihood of confusion can overcome the First Amendment. In this case, no such compelling finding could be made as a matter of law. The confusion to be actionable must be with the artistic work not some other product. This narrow construction accommodates the public interest in free expression. If there is no association between the trademark and the work - the movie here - then the consumer interest is too slight to warrant the Lanham Act trumping the First Amendment. The court found that Louis Vuitton’s claims in its complaint that consumers would be confused into believing that the knock-off bag is a genuine bag and/or that Louis Vuitton approved the use of the knock-off bag in the film do not suffice to overcome the protections of the First Amendment as a matter of law. The complaint failed to allege any use creating confusion between the trademark and the film.

While this decision would not apply to an advertisement which is commercial in nature by definition, it confirms the strong bar the First Amendment establishes for use of trademarks in non-commercial works such as films and books.

Rochelle D Alpert, Morgan Lewis & Bockius LLP, San Francisco