So, I read that Louis Vuitton is suing Warner Brothers for the line “Careful, that is a Louis Vuitton” in the movie “The Hangover II.” This got my hackles up – after all this IS a nominative use, unlike Bella’s Twighlight Jacket, and it is a non-trademark use – a description of the bag that’s presumably being damaged by hijinx and shenanigans (I haven’t seen the movie yet, so I don’t know).
Except, of course, that it wasn’t a Louis Vuitton bag – it was a knockoff. And that can create problems. After all, the use is no longer nominative, and no longer a fair description. Now there is a chance of consumer confusion – people might think the knockoff is a Louis Vuitton and be fooled into thinking that the sub-par stitching (so clearly visible on the screen – yeah right) is Louis Vuitton’s and of poor quality. Trademark people call this “post-sale confusion,” like the kind that comes when you wear a $10 Rolexxx. You weren’t fooled, but others might be fooled.
There’s one problem with the argument – under the Lanham Act, Section 43(a), the unlawful behavior must use the mark in connection with goods and services. That is, a trademark use. Thus, we hold the seller of the Rolexxx liable, but not the wearer, because the wearer is not making a trademark use – they are not using it in connection with goods and services.
That, I suspect, won’t stop Louis Vuitton (or sadly, the courts) here. I suspect that the finding will be that the movie is a “good or service” and that use of the name “Louis Vuitton” will be “in connection” with the movie, and confusing, and thus create liability. I can’t imagine this is what the authors of the Lanham Act had in mind. Nevertheless, courts have accepted survey evidence that credits consumers who think that the movie must have gotten a sponsorship deal with Louis Vuitton, even if they did not. In other words, courts are willing to find a trademark use just because consumers think there was one, even if there wasn’t.
So, this is another one of those “don’t do it” cases. I’m all for pushing the envelope of non-trademark use by having studios refuse to pay just for the right to utter the name of a famous mark. But it is a bad idea indeed to then use a knockoff in the movie.