What do Britney Spears and a dog toy manufacturer called Haute Diggity Dog have in common? Answer: both were recent defendants in legal actions in France and the US by luxury goods maker Louis Vuitton.
Both were engaged in new-media-style mashups that could be described as brand guerrilla warfare. Louis Vuitton elected to fire back with traditional litigation.
Their tales are titillating examples of creative mashups causing legal bashups.
These recent court decisions also illustrate important lessons in differences in the treatment of parody, satire and other forms of brand guerrilla warfare in France, the United States and Australia.
Sponsors will sometimes almost kill to get their products, brands and logos in movies and film clips – a type of marketing known as product placement (as not-so-subtley demonstrated in the hit movie Wayne’s World). Product placement is widespread also in the music industry, as demonstrated in this clip as John Safran humourously identifies Sony’s penchant for blatant promotion of its own electronics products in music videos of musicians signed to its record label.
Luis Vuitton is famous for its handbags, emblazoned with its signature patterns and trade-marked motif. They covet the high end of the fashion market and currently have 50 registered trade marks in Australia over names, brands and various images. Luis Vuitton is a prime target of counterfeiters worldwide producing cheap imitations for the black market.
Luis Vuitton also has a reputation for vigorously enforcing its trade mark rights internationally. In 2007 in France it took legal action against Britney Spears for featuring a Vuitton-upholstered dashboard in a car in her music video (see photo right, clipped from her Do Something video).
The lawsuit was successful and Britney’s record label Sony BMG as well as MTV online were ordered to pay 80,000 euros each in damages. A spokesperson for Luis Vuitton claimed the video constituted an "attack" on Louis Vuitton's brands and its luxury image.
Luis Vuitton is serious about removing any trace of the video. IP Kat reports music website Music Law Updates received an email from representatives of Louis Vuitton which stated:
“…a judgment was entered against SONY BMG this week regarding the music video for the Britney Spears track “Do Something”. The original video included a short shot of Vuitton fabric contained on the interior of a pink Hummer vehicle. The court held that this video infringed Vuitton’s rights.
Please confirm and take down if live on your service the below.”
Barking up the wrong tree
Another company to incur the wrath of Luis Vuitton in recent times is Haute Diggity Dog, a United States manufacturer of dog toys which parody famous brands. They’re the people to see if you want to pamper your pooch with "Chewnel No. 5," "Dog Perignon” or "Furcedes".
Luis Vuitton took exception to Haute Diggity Dog’s "Chewy Vuiton" line of handbag-shaped dog toys. It commenced proceedings in the United States District Court for trademark infringement, counterfeiting, unfair competition, trademark dilution and copyright infringement. Supporting its case was an amicus brief by the International Trademark Association. The case included a claim under the Trademark Dilution Revision Act 2006, which in the US introduced a lower standard of proof for complainants by requiring only that there be evidence of a "likelihood of dilution".
The court of first instance found Haute Diggity Dog’s products as an excusable parody of Luis Vuitton’s trademarks and copyright. The US Court of Appeals for the Fourth Circuit agreed in its 13 November 2007 decision, saying:
"[The toy] immediately conveys a joking and amusing parody. The furry little 'Chewy Vuiton' imitation, as something to be chewed by a dog, pokes fun at the elegance and expensiveness of a LOUIS VUITTON handbag, which must not be chewed by a dog… The dog toy irreverently presents haute couture as an object for casual canine destruction. The satire is unmistakable…. the Chewy Vuitton dog toys convey just enough of the original design to allow the conusumer to appreciate the point of parody, but stop well short of appropriating the entire marks that LVM claims”. (Circuit Judge Niemeyer at page 9).
The Court of Appeals' opinion illustrates that under US law an effective parody in some cases can cancel a dilution claim when the distinctiveness of the famous mark remains as a unique identifier of its source:
"In short, as Haute Diggity Dog's "Chewy Vuiton" marks are a successful parody, we conclude that they will not blur the distinctiveness of the famous mark as a unique identifier of its source. It is important to note, however, that this might not be true if the parody is so similar to the famous mark that it likely could be construed as actual use of the famous mark itself." (Circuit Judge Niemeyer at page 20).
This Haute Diggity Dog victory may be pyrrhic. IP Kat reports the defence allegedly cost it over US$300,000.
Legal checklist and lessons
If these court cases had taken place in Australia they may have been decided differently. The facts of the Britney Spears case are unlikely to offend law in Australia. However, in Australia as in France and the United States, mashups can create legal risks. Issues can arise under Australian intellectual property, trade practices and passing off law.
There have been recent amendments to the Australian Copyright Act 1968 (Cth) allowing for fair dealing for parody or satire. We have previously overviewed these changes. That post contains a detailed legal checklist of considerations when using someone’s copyright for parody or satire.
As the changes are restricted to Australian copyright law, not trade marks, there is no free pass to use the brands of others.
There are four practical lessons from the recent Louis Vuitton cases in France and the United States.
First, be aware that laws differ between jurisdictions, sometimes remarkably. Get local advice. Australia for example does not have a trade mark dilution law as such.
Second, remain within the legal boundaries of each jurisdiction’s available legal defences. This is illustrated by what Haute Diggity Dog achieved for "Chewy Vuiton".
Third, know thine enemy! There is greater risk if the target of a mashup has a reputation for desiring brand exclusivity and litigation.
Fourth, seek legal and litigation strategy advice. Haute Diggity Dog spent a fortune for a start-up to defend against Louis Vuitton's wrath against satire or parody. However, as mashups are core business for Haute Diggity Dog, rather than being an expense its victory and legal costs may be an investment reducing and complicating full frontal litigation by future up market attackers.