While “The Hangover: Part III” is set to be released in May 2013, its prequel, “The Hangover: Part II” was recently involved in a trademark dispute with one of the luxury fashion giant’s, Louis Vuitton. Louis Vuitton sued Warner Bros. claiming that its use of a knock-off Louis Vuitton bag in the movie infringes upon Louis Vuitton’s trademarks.
For those who are not familiar – “The Hangover: Part II” is the sequel to the 2009 hit “bachelor-party-gone-awry-comedy” “The Hangover” that, according to the complaint, became the highest gross R-rated comedy of all time and one of the highest grossing movies of 2011.
In one of the earlier scenes in the movie a viewer can see travel trunks and bags that appear to be bearing a famous LV pattern. In one scene in the airport, Alan (one of the main characters) reacts to another character moving his bag (a knock-off Louis Vuitton or as Warner Bros. calls it in its papers a “prop bag”) by saying “Careful that is…that is a Lewis Vuitton.”
Warner Bros.’ “The Hangover: Part II”
One might think Louis Vuitton should have a strong claim against Warner Bros. who not only used the “prop” Louis Vuitton bags but also made a reference to the luxury brand (although the French name of the brand was mispronounced by Alan) in a movie that was viewed by millions of the consumers. These scenes were used in numerous commercials and advertisements of the movie and Alan’s “Lewis Vuitton” line became an often-quoted joke and a catch phrase.
However, Judge Carter of the U.S. District Court for the Southern District of New York, dismissed Louis Vuitton’s complaint finding that Warner Bros.’ use of the knock-off bags is protected by the First Amendment. Louis Vuitton Mallatier S.A. v. Warner Brothers Entertainment Inc., 868 F. Supp. 2d 172 (S.D.N.Y. 2012).
In Rodgers v. Grimaldi, the Second Circuit held that the Lanham Act is inapplicable to “artistic works” as long as the defendant’s use of the mark is (1) “artistically relevant” to the work and (2) not “explicitly misleading” as to the source or content of the work. The threshold for artistic relevance will be satisfied unless the use “has no artistic relevance to the underlining work whatsoever.” 875 F.2d 994, 999.
Here, the Court, after completing a very comprehensive analysis of the movie, found that this low threshold was satisfied (at 178):
Alan’s terse remark to Teddy to “[be] [c]areful” because his bag “is a Lewis Vuitton” comes across as snobbish only because the public signifies Louis Vuitton—to which the [knock-off] bag looks confusingly similar—with luxury and a high society lifestyle.  His remark also comes across as funny because he mispronounces the French “Louis” like the English “Lewis,” and ironic because he cannot correctly pronounce the brand name of one of his expensive possessions, adding to the image of Alan as a socially inept and comically misinformed character. This scene also introduces the comedic tension between Alan and Teddy that appears throughout the Film.
The Court also found that the second prong of the Rodgers “artistic work” test is satisfied and concluded “it is highly unlikely that an appreciable number of people watching the [movie] even notice that Alan’s bag is a knock-off.” Id. at 182. The Court went even further in finding that “there is no likelihood of confusion that viewers would believe the [knock-off] bag is a real Louis Vuitton bag just because a fictional character made this claim in the context of a fictional character.” Id. at 184. Not surprisingly, the French fashion house was very disappointed with the Court’s decision.