Burns & Levinson's Mark Schonfeld The trademark enforcers at Louis Vuitton Malletier S.A. are in a dustup with the University of Pennsylvania Law School over the school's use of Vuitton marks on an invitation and poster for a March 20 fashion law symposium.
On Feb. 29, Michael Pantalony, Louis Vuitton's director of civil enforcement for North America, penned a letter to the law school's dean, Michael Fitts, about the issue.
Pantalony wrote that he was "dismayed" to learn that a school student organization, the Penn Intellectual Property Group, had "misappropriated and modified" the company's trademarks in its "toile monogram." The monogram is made up of the initials LV and three trademarked design elements. These three elements are on the school's invitation and poster: a circle with four-leaf flower inset and a curved beige diamond with a four-point star inset and the negative of the diamond design. Instead of LV, the poster uses the initials TM, with the T slightly above and on top of the M.
Pantalony wrote that the egregious action is a "serious willful infringement" that knowingly dilutes the company's trademarks and may mislead others into thinking such actions are fair use: "People seeing the invitation/poster may believe that Louis Vuitton either sponsored the seminar or was otherwise involved, and approved the misuse of its trademarks in the manner. I would have thought the Penn Intellectual Property Group, and its faculty advisors, would understand the basics of intellectual property law and know better than to infringe and dilute the famous trademarks of fashion brands, including the LV Trademarks, for a symposium on fashion law."
The letter demanded that the school take immediate steps to stop using the invitation/poster and to contact Pantalony within five days "to assure me that steps have been taken to avoid confusion and dilution of the LV trademarks."
On March 2, Robert Firestone, the University of Pennsylvania's associate general counsel, wrote back to Pantalony. Firestone said that the student group, which he identified as the Pennsylvania Intellectual Property Group, does not believe that the poster and invitation infringe or dilute the company's trademarks.
He quoted a section of the U.S. trademark code that "expressly protects a noncommercial use of a mark and a parody from any claim for dilution." He also asserted that there's no likelihood of confusion that the company sponsored or is associated with the symposium.
Firestone wrote that, in order to infringe the company's trademarks under the Lanham Act, the school would have to be using them in interstate commerce in a way likely to cause confusion between "Louis Vuitton's luxury apparel goods and [the student group's] educational conference among the relevant audience."
"It is artwork on a poster to supplement text, designed to evoke some of the very issues to be discussed at the conference, including the importance of intellectual property rights to fashion companies, the controversy over the proposed Innovative Design Protection and Piracy Prevention Act, and the exceptions in the law to liability for dilution, including parody," Firestone wrote.
Firestone further wrote that he would advise the student group that it could continue to use the posters and invitations.
He closed the letter by inviting Pantalony to attend the event: "The students have invited some of the in-house counsel from some of your peer fashion companies to speak on the panels, and I am sure the students would welcome your attendance as well."
Firestone declined to comment. Pantalony did not respond to a request for comment. Louis Vuitton spokesperson Ruth Pachman said the company has no comment beyond its letter to the law school.
Mark Schonfeld, a partner at Boston-based Burns & Levinson, whose practice includes trademark law and fashion matters, said, "I would have thought that Penn Law School, which is one of the finest law schools in the country, would have known better than to engage in unauthorized use of one of the world's most famous trademarks." Schonfeld occasionally represents Louis Vuitton, but isn't involved in this matter.
Schonfeld also said he wonders whether the school used Louis Vuitton's trademarks "in order to provoke a situation which could lead to more public discussion regarding the issues at the conference."
"Brand owners have to approach parody situations like this one very carefully," said Julia Huston, who chairs the trademark and copyright practice at Boston's Foley Hoag. Huston likewise is not involved in the dispute. "Brand owners can also be creative in the relief that they seek, and ask for something short of a complete cease and desist if it appears that the other party has a colorable parody defense and acted in good faith," Huston said.
The university's response was appropriate, said Andrew Berger an intellectual property counsel to New York-based Tannenbaum Helpern Syracuse & Hirschtritt, who also isn't involved in the matter. "This looks to be a fair use of the poster," Berger said. "I can't imagine that consumers would be confused by its use."
Sheri Qualters can be contacted at squalters@alm.com.
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