Past Fashion Law: Louis Vuitton & Penn Law

In 2012, Penn Law got itself into ‘toile’ and trouble with Louis Vuitton over the use of Louis Vuitton’s “toile monogram” for a Penn Law student organization’s annual symposium’s poster. This past fashion law conflict raises interesting considerations in trademark enforcement and, frankly, is amusing.

Penn Intellectual Property Group (“PIPG”) created a poster where the top portion parodied Louis Vuitton’s “toile monogram” pattern and signature colour scheme of chocolate brown with beige. The trademark protected “toile monogram” consists of “the initial LV and three distinctive design elements—a circle with a four-leafed flower inset; a curved beige diamond with a four-point star inset; and its negative.” After consulting Penn Law faculty members, PIPG parodied the pattern by replacing the initial ‘LV’ with ‘TM’ and adding the copyright symbol. These alterations were done to cleverly match the annual symposium’s event on intellectual property (“IP”) issues in fashion law.

Ironically, the event on IP issues in fashion law manifested its own IP issue in fashion law. Louis Vuitton’s attorney at the time Michael Pantalony sent Penn Law a cease-and-desist letter in response to PIPG’s modification of the LV trademarks and “toile monogram” pattern. Pantalony argued that “this egregious action is not only a serious willful infringement and knowingly dilutes the LV trademark, but also may mislead others into thinking that this type of unlawful activity is somehow ‘legal’ or constitutes ‘fair use’ because the Penn Intellectual Property Group is sponsoring a seminar on fashion law and ‘must be experts.’”

Associate General Council of Penn Law’s Office of General Counsel Robert Firestone responded to Louis Vuitton arguing that the artwork on the poster does not infringe on or dilute any of Louis Vuitton’s trademarks. The artwork does not use the pattern to indicate goods and services, rather the artwork is used to promote an educational symposium which would be Class 41 in the Niche classification system and beyond the class registrations of Louis Vuitton’s trademarks. Further, there is no likelihood of confusion that the event is associated with Louis Vuitton instead of PIPG. Lastly, the artwork is a non-commercial parody. As a tongue-in-cheek remark, Firestone ended the letter encouraging Pantalony to attend the educational symposium and learn about IP issues in fashion.

This conflict between Louis Vuitton and Penn Law demonstrates broader lessons in trademark enforcement. First, the use of the trademark is significant because non-commercial uses, parodies and use in different industries impacts whether the use is infringing the trademark protection. Secondly, there is discretion in policing trademarks which means the burden and decision to respond to potential infringement is up to the trademark owner and legal consultants. The policing of trademarks is tied to maintaining trademarks and deterring unauthorized uses because otherwise the mark can weaken and lose distinctiveness. This discretion explains why in some instances brands aggressively make a statement against certain unauthorized uses like in Louis Vuitton with Penn Law, and other times brands chose to not respond like Tiffany & Co with Semple’s Tiff paint. While it seems intuitive to believe that enforcing trademarks too actively can discredit the brand, the decision to stop the enforcement of trademarks raises the question of “why now?” for future enforcement.

Now, we can only laugh about the irony of a IP fashion law issue from a symposium on IP issues in fashion.