Best of 2010: Foul ball?
First published on March 2, 2010.
Louis Vuitton Malletier and its lawyers demonstrate how to make sure a few seconds of what they say is trademark dilution get a lot less diluted–they’re suing Hyundai over this commercial played at the Super Bowl. Now, concentrate:
(Download Luxury Made Available in the Hyundai Sonata)
I’m not trying to hide the ball. Far from it; take a look below and to the right–there’s your tort right there. Now Marty Schwimmer, who also picked up this story (and who has posted a copy of the complaint), demands of readers, “Spot The Lawsuit In This Commercial — (‘)(‘) <- me rolling my eyes.” Is Marty right? Is this civil action just an air ball?
The complaint is easy to make fun of, both as a legal matter and on sort of flat-footed “common sense” grounds. (Come on, it’s just a second or two on the screen! Come on, now everyone’s going to just see the commercial over and over again!) But that’s not entirely the same as saying it’s indefensible.* In fact, I think that while LVMH is shooting aggressively from beyond the three-point line, it is doing what it has to make sure its trademark rights don’t fade away.
First, though, let’s put the two dilution claims (federal and New York), which are the real meat here, aside. As I will urge below, there is a colorable, and arguably very winnable, argument for them. But first, the shootaround: Yes, it is time for me to put on my Professor Pendatic hat, unable as ever to resist needling good lawyers who have clients I’d also like to have and fully aware of my own lack of game, about the double-dribbles in their submissions.
The technical foul here is the fact that, besides trademark dilution, LVMH also sued Hyundai on three other legal theories: false designation of origin under Lanham Act’s section 42; common law trademark infringement under New York law trademark law; and infringement of LVMH’s registered trademarks.
A little practitioner’s hint: The last count in a multi-count commercial complaint can be viewed as meritless, mere ballast, about 95% of the time. I don’t believe in ballast, but lots of lawyers (about 95% of them) do. And as a trademark litigator who often represents defendants, when I see that the registered trademark infringement claim is the last one in the complaint, that tells me, “Oh, good, so there’s no trademark infringement here, at least.” And of course there isn’t; Hyundai doesn’t sell or offer either cars or basketballs bearing anything likely to be confused with an LVMH registered mark, plus a million other reasons.
Hey, wait though–what about the other two trademark claims? How about the section 42 and New York unfair competition claims, which are counts three and four? Well, sorry kids, but you can’t have three last counts! Only one can be the lastest. And big-boy trademark registration infringement, being usually the proudest and loudest thing you can sue an infringer for, as a matter of dignity obviously insisted on being discreetly tucked away at the end–damned to sitting next to the ad damnums but at least not exposed to the glare up front.
But if that’s the case, then why still throw in the other two non-registration-based trademark claims at all?
To answer that question, children, you’ll have to ask one of the other 95% of lawyers.
Now, having said all that, we are left with the dilution claims. So what justification can there be for filing this lawsuit at all?
Well, what is dilution, after all? Dilution is the lessening of a famous mark’s capacity to identify and distinguish goods or services, regardless of whether the trademark owner and the defendant compete with each other and without regard to LIKELIHOOD OF CONFUSION. Fair use is not actionable as dilution, but typically this means fair use in comparative advertising.
Isn’t this, really, a trademark use, then? Doesn’t Hyundai want you to say, “Ha ha, a Vuitton basketball!” No, it’s not selling a basketball, but it’s surely labeling one. Is this use a parody, perhaps? Mmm, maybe, maybe not. I don’t think so.
So assuming that the marks are indeed confusingly similar (they seem to be), why isn’t this use of them, in fact, dilution by blurring? (I wouldn’t suggest they’re going for a claim based on dilution by tarnishment. Nothing unsavory about playing a little round-ball, is there?)
Let’s take a time out here and huddle around: LVMH, in fact, has a huge branding problem. It has built a brand (writ large) that is so successful, that is so symbolic an indicator, in fact, of success itself (why, it’s the Cadillac of brands! The Michael Jordan, even!), that its ability to maintain the commercial value of that brand could be the ultimate victim of that success. This success was even held against it in the dubious “Chewy Vuitton” decision–and that, it seems, is one move that LVMH is not going to get burned by twice.
What other recourse does the Malletier have to avoid its platinum trademarks becoming, despite their universal power as source indicators, a line of generic symbols of “luxury”? The answer may be that the law does not, or cannot, provide relief for such a unique situation. Maybe at a certain point the ref blows the whistle, culture has the last word, and you’re just plain cola, aspirin and google. So be it.
But LVMH can hardly be blamed, given the weapons at its disposal, for dedicating a bunch of them to this brand-management-by- litigation-signals game. Doing so imposes costs on defendants and would-be defendants who will seldom have embossed purses of sufficient size to defend. Is it wrong to fight till the buzzer against the death of your billion-dollar brand?
IP litigation is not an appropriate vehicle to stake out, much less appropriate, what should be the free semiotic and even commercial territory surrounding legitimate trademark rights. But thanks to the Chewy Vuitton decision, the legal trend respecting LVMH’s unique brand threatens to get disturbingly deep “into the paint” and threaten the bona fide trademark protection due that phenomenally valuable brand. What else can LVMH do but play tenacious defense?
So unlike Marty, while it’s no layup I can’t say the LVMH dilution drive here is meritless. LVMH may or may not win its dilution case against Hyundai, but its dilution claims are not frivolous. And I can’t say the strategy in bringing them is any less legitimate than the full-court press you’d expect from a team with a lot at stake in keeping the ball as far away from their high-rent hoop.
* I formerly (and, well, successfully) represented LVMH, but believe me, I have no illusions that I ever will do so again, so there is no bias here on my part.