Trademark parodies and iconic marks: can foul become fair?
In 2010 I wrote this post about a now-notorious case, eventually ensconced as Louis Vuitton Malletier, S.A. v. Hyundai Motor America, 2012 WL 1022247 (S.D.N.Y., March 22, 2012) and covered intensely (as the links there indicate) by Marty Schwimmer among others, in which the Southern District of New York ruled that the Hyundai’s use of the iconic trademarks depicted on the basketball shown was not fair use.
Going against type, I argued that the plaintiff had something legitimate to say for its litigation approach, at least, considering everything; many others found the outcome quite unsatisfactory, urging that the use should have been viewed as that often claimed, but seldom seen, species of fair use called parody. Evidently, as Mr. Schwimmer now reports, history is moving in favor the “anti’s”:
Followers of the legal treatments of parodies of trademarks may want to skip immediately to footnote 4 of the decision.
You see the top two pictures [at right]? One side of the bag says ‘My Other Bag …” and the other side is a depiction of an LV bag. Get it? Ok, that’s fair use. LV’s causes dismissed.
You see the picture of the ‘LV’ basketball [above]? The SDNY ruled in 2012 that that was actionable. And now this SDNY court says in footnote 4 that it won’t follow Hyundai.
And what, indeed, is in the bag that is Footnote 4?:
Even if Hyundai were not distinguishable, this Court would decline to follow it. In the Court’s view, the Hyundai Court blurred the distinction between association and dilution. As discussed in more detail below, association is a necessary, but not sufficient, condition for a finding of dilution by blurring. See, e.g., Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433 (“[T]he mere fact that consumers mentally associate the junior user’s mark with a famous mark is not sufficient to establish actionable dilution. . . . [S]uch mental association will not necessarily reduce the capacity of the famous mark to identify the goods of its owner.”).
That’s the way the ball bounces!