BY:Neil J. Rosini, Michael I. Rudell
(Originally published in the Entertainment Law column in the New York Law Journal on Friday, August 24, 2012)
Book authors, film directors and screenwriters, video game creators and other artists often find that references to actual trademarks add verisimilitude to their works. Sometimes, an artist’s purpose goes beyond true-to-life detailing: mention of a trademark can be used to provide humor at the trademark owner’s expense. Whatever the motive, does the artist need permission from the trademark owner? That question was considered in Louis Vuitton Malletier S.A. v. Warner Brothers Entertainment Inc., 11 Civ. 9436 (SDNY, Decided June 15, 2012), which concerned use of Louis Vuitton-like luggage in the film “The Hangover: Part II” (“Hangover”). The court’s answer was that First Amendment interests outweigh the trademark owner’s interests in many instances, including this one.
In this article we will review the facts in Louis Vuitton and then glance back at two major precedents in the Second and Ninth Circuits before returning to the court’s “Hangover” analysis, which drew from those precedents. The Second Circuit decision originated the “Rogers test,” which relates to the use of a trademark in the title of an artistic work without authorization. The Ninth Circuit decision extended that test to unauthorized use of a trademark within the body of an artistic work, as happened in “Hangover.”
The “Hangover” Facts
In an early scene from “Hangover,” the four main characters walk through Los Angeles International Airport as they begin their journey to Thailand for a bachelor party and wedding. As alleged in the complaint, a nearby porter pushes a dolly with “what appears to be Louis Vuitton trunks, some hard-sided luggage, and two Louis Vuitton Keepall travel bags.” One of the characters, Alan, seems to carry a matching over-the-shoulder Louis Vuitton Keepall bag but it’s actually a knock-off that bears a design resembling the “famous Toile Monogram” associated with Louis Vuitton products. Soon after, Alan places his knock-off bag on the seat next to him in the airport lounge. When another character moves the bag to make room for a third character, Alan says, “Careful that is… that is a Lewis Vuitton,” mispronouncing the word “Louis.” The film makes no further reference to any Louis Vuitton product or to the knock-off.
After the film’s release, the plaintiff, Louis Vuitton Malletier, S.A., sent a cease and desist letter to Warner Bros. Entertainment, Inc. the film’s distributor. Notwithstanding, the offending luggage remained in the film, appeared prominently in advertisements for the film, and could be seen in DVD and Blu-Ray releases. The scene did not go unnoticed by audiences: the “Lewis Vuitton” line allegedly became “an oft-repeated and hallmark quote from the movie” evidenced by internet references and blog excerpts.
More to the point, the plaintiff alleged that by using a knock-off and declaring it to be authentic, the defendant likely confused the public into believing that the knock-off was genuine and that Louis Vuitton sponsored and approved its use and misrepresentation as a genuine product. The likely effect, as alleged, was to “blur the distinctiveness” of the plaintiff’s marks and tarnish them “by associating Louis Vuitton with the poor quality and shoddy reputation of the cheap products” bearing the knock-off design.
The court observed that the plaintiff did not object to the unauthorized reference to the Louis Vuitton name in the film or the use of the authentic marks, nor did it assert that the public was misled into believing that the plaintiff sponsored or was affiliated with the film. The lawsuit’s three causes of action were all about the film’s use of the knock-off: false designation of origin/unfair competition in violation of 15 U.S.C. § 1125(a); common law unfair competition; and trademark dilution in violation of New York General Business Law § 360-I. In its motion to dismiss, Warner Bros. invoked the protection of the First Amendment under the framework established by Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Judge Andrew Carter granted the motion. Applying the Rogers test, the court used much the same analysis that would have applied had the plaintiff’s complaint been based on use of the correctly-pronounced Louis Vuitton name or its authentic marks.
The Rogers Test
In the seminal Rogers case, the Second Circuit considered the First Amendment rights of an author to refer without authorization in an artistic work’s title to another’s trademark, balanced against the rights of the trademark owner. The plaintiff was Ginger Rogers, an “international celebrity,” an Academy Award-winning dramatic actress, and the onscreen dancing partner of Fred Astaire on which her “principal fame” was based. Together they “established themselves as paragons of style, elegance and grace” in American films made in the ’30s and ’40s, earning a place “among that small elite of the entertainment world whose identities are readily called to mind by just their first names, particularly the pairing ‘Ginger and Fred.'” That phrase was the title of a fictional movie directed by Federico Fellini — the target of the complaint. The film’s plot focused on the televised reunion of two retired Italian cabaret performers, Amelia and Pippo, who had imitated Rogers and Astaire in their heyday, becoming known locally as “Ginger and Fred.” In her suit, Rogers claimed that the defendants’ title violated Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a), by giving the false impression that the film was “about her or that she sponsored, endorsed, or was otherwise involved in the film.”[i]
In analyzing the issue, the court focused on First Amendment protection that affords artists freedom of expression not only for their benefit but also for the benefit of audiences who enjoy their creative works. Those audiences are also consumers, however, and the Lanham Act guards against confusion on the part of ordinarily prudent purchasers as to the “origin, sponsorship or approval” of a product or service. Accordingly, “Consumers of artistic works…have a dual interest: they have an interest in not being misled and the also have an interest in enjoying the results of the author’s freedom of expression.”
To accommodate that dual interest, the Rogers court fashioned a two-prong test that places First Amendment interests above commercial concerns: the author’s work will not violate the Lanham Act unless the unauthorized use “has no artistic relevance to the underlying work whatsoever,” or, if it has some artistic relevance, unless the use “explicitly misleads as to the source or the content of the work.” The court’s guiding principle was 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,” notwithstanding the risk that some consumer confusion may result.
Applying the first prong of the test, the court found that the title “Ginger and Fred” was not “arbitrarily chosen just to exploit the publicity value of their real life counterparts but instead to have genuine relevance to the film’s story.” As for whether the title explicitly misled, the court noted that it contained “no explicit indication that Rogers endorsed the film or had a role in producing it.” At most, survey evidence indicated “that some members of the public would draw the incorrect inference that Rogers had some involvement with the film.” But that risk – “not engendered by any overt claim in the title” – was “so outweighed by the interests in artistic expression as to preclude application of the Lanham Act.” And “[t]o the extent that there is a risk that the title will mislead some consumers as to what the work is about, that risk is outweighed by the danger that suppressing an artistically relevant though ambiguous title will unduly restrict expression.”
In subsequent cases, the influence of Rogers spread beyond unauthorized use of trademarks in titles to uses found within the expressive works themselves. In 2008, the Ninth Circuit adopted the Rogers test in a decision involving another kind of knock-off in an “artistic” work: the use of the plaintiff’s allegedly “distinctive logo and trade dress” without authorization in a video game. (ESS Entertainment 2000, Inc. d/b/a Playpen v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008), cited in Louis Vuitton.)
In Rock Star Videos, the plaintiff operated a strip club featuring dancing nude females “on the eastern edge of downtown Los Angeles” with the name “Play Pen Gentlemen’s Club.” Its logo consists of the words “the Play Pen,” the phrase “Totally Nude,” and a silhouette of a nude female dancer. The plaintiff objected to the use of the title “Pig Pen” to designate a strip club in the video game “Grand Theft Auto: San Andreas,” which was set in a “cartoon-style” virtual neighborhood resembling the East Los Angeles environment where the plaintiff’s business was located. The artists took “some inspiration” from photographs of the Play Pen, but also used photos of other nearby locations in creating their design. Moreover, the virtual strip club lacked certain characteristics of the Play Pen building, like the nude silhouette and the separate “Totally Nude” descriptor. According to the lead map artist, the intent was to create a “fictional city that lampooned the seedy underbelly of Los Angeles and the people, business and places [that] comprise it.” The plaintiff did not contest that the use was “artistic.”
The court applied the Rogers test much as if the allegedly infringing name were identical to the plaintiff’s. The court had no trouble finding sufficient artistic relevance to the use of the Pig Pen name because “the level of relevance merely must be above zero.” Here, the defendants’ artistic purpose — to “recreate a critical mass of the businesses and buildings that constitute” the East Los Angeles neighborhood — satisfied that part of the test. The defendants also prevailed on the “explicitly misleading” prong. The court observed that the real strip club and its virtual counterpart had “almost nothing in common.” There was no indication that the buying public would reasonably believe that the plaintiff produced the video game, or provided “expertise, support or unique strip-club knowledge it possesses to the production of the game,” especially because “[w]hatever one can do at the Pig Pen seems quite incidental to the overall story of the
.” In sum, a reasonable consumer would not conclude that “a company that owns one strip club in East Los Angeles, which is not well known to the public at large, also produces a technologically sophisticated video game.”
The “Hangover” Analysis
The court in the “Hangover” case also applied the Rogers two-part test and held that both prongs favored Warner Bros. In examining “artistic relevance,” the court noted that the threshold is “purposely low” and that whenever the defendant intends an “artistic — i.e., noncommercial — association with the plaintiff’s mark, as opposed to one in which the defendant intends to associate with the mark to exploit the mark’s popularity and good will,” the use will be permitted. In the “Hangover” film, the use of the knock-off bag along with the comment to “[be][c]areful” because the bag “is a Lewis Vuitton” was intended to convey humorous snobbery. It was funny because the character mispronounced the name “Louis” and ironic because he could not “correctly pronounce the brand name of one of his expensive possessions, adding to the [character’s image] … as a socially inept and comically misinformed character.” Moreover, the scene introduced the comedic tension between that character and another. The significance of the scene relied on the bag’s looking like a Louis Vuitton bag whether it was authentic or not. Accordingly, use of the knock-off had “some artistic relevance to the plot” and satisfied the first prong of the test.
As for the “explicitly misleading” prong, the court noted that the plaintiff did not allege that the defendants used the knock-off bag in order to “mislead consumers into believing that Louis Vuitton produced or endorsed the Film.” Therefore the complaint “fails to even allege the type of confusion that could potentially overcome the Rogers protection.” (Instead, the plaintiff alleged that consumers would wrongly conclude that the knock-off was genuine and that Louis Vuitton approved use of the knock-off in the film.)
But even if such confusion had been alleged, “Louis Vuitton’s allegations of confusion are not plausible, let alone ‘particularly compelling'” — the more stringent standard required for a plaintiff to prevail on the second prong of the Rogers test. Among other reasons, the court found it unlikely that an appreciable number of audience members would notice that the bag was a knock-off, particularly in light of its brief appearance. Further, it was “hardly conceivable” and outside “the realm of plausibility” that viewers would seriously attribute a fictional character’s views about the origin of designer handbags (“even about those he does not correctly pronounce”) to the company that produced the film. The court concluded that the likelihood of confusion was “at best minimal” and when balanced against First Amendment concerns, “not nearly significant enough to be considered ‘particularly compelling'” as the Rogers test requires.
The court also expressly rejected the plaintiff’s more “expansive view” of when the unauthorized use of a trademark should be actionable. Observing that the plaintiff’s approach would make Warner Brothers liable for identifying the knock-off bag with the Louis Vuitton marks, or alternatively, for implying that Louis Vuitton approved the use of the knock-off in the film, the court held that the public’s interest in avoiding consumer confusion is not enough to overcome the significant threats to free expression that would result.
[i] Rogers also asserted that her right of publicity had been violated and that she had been depicted in a false light. These claims were dismissed in the same decision.