Image Attributed to Enoch Lau

Fashion law has been defined as the “specialized area of law that deals with intellectual property (copyright and trademark law, including brand licensing), domestic and international business transactions, textiles, merchandising, employment and labor concerns, and customs (import/export issues).”  This area of law is rapidly growing, and is very near and dear to my heart.  The chance to practice in this area of law was a major reason I decided to attend law school.

In the last few years, fashion law has garnered much attention in the law community.   In 2010, Fordham University’s School of Law launched its Fashion Law Institute, where students can merge their passion for fashion with their academic desire to study law. Howard University School of Law’s Intellectual Property Students’ Association recently hosted its first annual Fashion Law Week here in Washington, DC.  Numerous blogs have been dedicated to this specialized field of law.  This area of law is ripe with intellectual property issues, including trademark, copyright, and even patent infringement cases.  And in an ironic turn of events, one law school, which has dedicated its resources to discussing the intellectual property issues surrounding the emerging field, found itself in the middle of a fashion law clash.

This year, the University of Pennsylvania Law School’s Intellectual Property Group focused their annual symposium on fashion law.  In order to gain attention for their event the UPenn student group created a poster, which is a takeoff of the iconic Louis Vuitton Toile Monogram.  The poster uses similar colors to the recognized brown and tan monogram, but replaces the original letters “LV” with “TM,” standing for trademark.  Also, the flower in the famous monogram is replaced with the © symbol for copyright.  Quite clever, if you ask me. 

However, Louis Vuitton (“LV”) is particularly sensitive about their trademarked Toile Monogram. The French fashion house has been in a number of disputes over their trademark recently, including suing Warner Brothers over featuring a knock-off handbag in the movie “The Hangover Part II.”  After catching wind of UPenn’s symposium poster, Louis Vuitton continued their litigious streak and sent University of Pennsylvania’s Dean Michael Fitts a cease and desist letter.  The letter claimed trademark infringement and dilution, but failed to mention which statutes in particular the University of Pennsylvania violated.  Further, Michael Pantalony, Director of Civil Enforcement at Louis Vuitton, asserted that people will be confused by the poster and could believe that Louis Vuitton was sponsoring the event.  The letter demanded that the law school take steps to change the poster.

However, Louis Vuitton didn’t scare the Ivy League school.  The University of Pennsylvania wrote its own response letter to Mr.Pantalony contending that the student group did not infringe on LV’s trademark and emphasized that the actions taken by the student group are protected under the federal trademark statute.  The response letter claimed that UPenn did not dilute Louis Vuitton’s trademark and cited 15 U.S.C. 1125(c)(3)(c), which excludes any noncommercial use of a mark.  UPenn further asserts that the poster is fair use under 15 U.S.C. 1125(c)(3)(A) and a parody under 15 U.S.C. 1125(c)(3)(A)(ii).  UPenn supported this argument by citing to a case that the fashion house might have some familiarity with.  The response letter cited Louis Vuitton Malletier v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007), a case where the luxury brand failed to win on either the trademark infringement or trademark dilution charge against a dog toy manufacturer.

The response letter further asserted that there was no violation of 15 U.S.C. 1125(a) because there is no likelihood of confusion.  Louis Vuitton could not be confused as to have sponsored the event or to have been associated with the student group’s symposium.

However, the IP rights of these luxury brands are many times their most important asset, and if their brand is being diluted, their rights should be protected.  One can make the case that the company is just protecting its legitimate trademark; while some argue that Louis Vuitton is acting as a trademark bully.   In any event, Louis Vuitton could build a little goodwill with this audience in particular.  After all, they are the future lawyers who are interested in these issues and perhaps would like to advocate on the behalf of luxury brands such as Louis Vuitton one day.

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