On Wednesday, Warner Bros. told a New York federal court that movies have a First Amendment right to feature trademarks as part of their creative expression without requiring the consent of rights owners. The studio is making the argument in defending a lawsuit from Louis Vuitton over knockoff handbags shown in The Hangover Part II.
Louis Vuitton, the French fashion house that lately has become known in legal circles for its litigiousness, sued Warners in December over scenes from the 2011 comedic hit.
In Hangover II, the character played by Zach Galifianakis carries a bag marked LVM, and when it gets pushed, he admonishes another character, “Be careful, that is … that is a Lewis Vuitton.”
The 25-second clip, the humorous mispronunciation and the French brand's sensitivity about counterfeits triggered this interesting trademark-infringement case. Louis Vuitton says the bag featured in the film was made by the Chinese-American company Diophy and that the film was harmful because it created consumer confusion. The company demanded millions of dollars if the scenes weren't deleted.
Warners has reacted strongly against the claims, pointing to what it believes to be the seminal case in this area -- the 2nd Circuit's 1989 decision in Rogers v. Grimaldi.
In that case, Hollywood star Ginger Rogers sued the makers of the film, Ginger and Fred, saying that though the film wasn't about her and Fred Astaire -- but rather about two fictional Italian cabaret performers who imitated Rogers and Astaire -- the movie nonetheless confused consumers into thinking the film was about her and that she approved of it.
The 2nd Circuit disagreed, saying the movie was "an exercise of artistic expression rather than commercial speech" and that the alleged misappropriation had to be "explicitly misleading."
Warners, represented by Andrew Bart and Gianni Servodidio at Jenner & Block, says that Louis Vuitton is trying to circumvent Rogers by arguing that the precedent would only protect a real bag, not a 'knockoff." But the studio says the First Amendment doesn't turn on whether an expressive work depicts a "genuine" trademarked product.
"Rather, the issue is the freedom of the author to incorporate references to real life -- including references to trademarks and even to counterfeit goods -- in creating the expressive work," Warners says in its motion to dismiss. "The ownership of a trademark confers many rights but not the right to alter or veto such creative expression."
Finally, the studio says that Louis Vuitton is misinterpreting trademark law and suggests that if the fashion brand wants to pick the proper legal target, it would be Diophy, which unlike the studio, is said to actually sell the knockoff in question.