In the comedy ‘The Hangover: Part II,’ one character roughly moves another character’s luggage, and that character, whom we know to be a buffoon, says ‘Careful, that, that is a Lewis (sic) Vuitton.” (you can see the exchange beginning at approximately 1:40 in the clip above). LV gets a copy of the DVD, slows it down, and determines that what looked like an LV during its 3 second cameo, is not in fact an LV, but rather is a Diophy, which is apparently an LV counterfeit. LV sues Warner Brothers, producers of the film, on trademark grounds. WB moves to dismiss.
Held: The Court notes the heightened standard for pleading Lanham Act claims regarding use of marks in artistic works. LV alleged (1) that consumers will be confused into believing that the Diophy bar is really a genuine Louis Vuitton bag; and (2) that LV approved the use of the Diophy bag in the Film. However, LV did NOT allege that Warner Bros. used the Diophy bag in order to mislead consumers into believing that LV produced or endorsed the Film, which might have been actionable. However:
The Court concludes that Louis Vuitton’s allegations of confusion are not plausible, let alone “particularly compelling.” First, it is highly unlikely that an appreciable number of people watching the Film would even notice that Alan’s bag is a knock-off. Cf. Gottlieb Dev. LLC v. Paramount Pictures Corp., 590 F. Supp. 2d 625, 634–35 (S.D.N.Y. 2008) (Chin, J.) (no confusion of plaintiff sponsoring defendant’s film where “it would be difficult for even a keen observer to pick out [plaintiff’s] trademark” since “it appears in the background of the scene” and “occupies only a minute fraction [of] the frame for three segments lasting approximately three seconds each”). In this regard, Louis Vuitton is trying to have it both ways: arguing that the Diophy bags are so similar as to create consumer confusion but at the same time so obviously dissimilar that someone watching the Film would notice the slightly different symbols used on the Diophy bag. Yet, the Diophy bag appears on screen for no more than a few seconds at a time and for less than thirty seconds in total, and when it is on screen, it is usually in the background, out of focus, or partially obscured by other things. Like the appearance of the plaintiff’s mark in Gottlieb, the Court finds that the difference between the authentic and knock-off bag is so difficult to even notice, that a claim of confusion under the Lanham Act “is simply not plausible.” Gottlieb, 590 F. Supp. 2d at 635.
Furthermore, Louis Vuitton’s position assumes that viewers of the Film would take seriously enough Alan’s statements about designer handbags (even about those he does not correctly pronounce) that they would attribute his views to the company that produced the Film.This assumption is hardly conceivable, and it does not cross the line into the realm of plausibility. See Twombly, 550 U.S. at 570.
Lastly, Louis Vuitton is objecting to a statement made by a fictional character in a fictional movie, which it characterizes as an affirmative misrepresentation. However, this assumes that the fictional Alan character knew that his bag was a knock-off; otherwise, he would simply be (innocently) misinformed about the origin of his bag. For these reasons, the Court concludes that the likelihood of confusion is at best minimal, and when balanced against the First Amendment concerns implicated here, it is not nearly significant enough to be considered “particularly compelling.” See Twin Peaks, 996 F.2d at 1379.