Near the beginning of the film The Hangover: Part II, the four friends are walking through the Los Angeles International Airport on their way to board a flight to Thailand for Stu’s bachelor party. Alan, Mr. Socially Awkward, is carrying an over- the-shoulder bag appearing to be a pricey and lavish Louis Vuitton. While waiting to board their flight, Alan puts the bag on an empty seat. When one of the friends attempts to place the bag on the ground to open up the seat for someone else, Alan protests, “careful that is…that is a Lewis Vuitton.”
Due to the reference made to the Louis Vuitton bag, Louis Vuitton sued Warner Brothers for trademark infringement. Louis Vuitton was upset because the bag used in the film was actually a Diophy (or knockoff) bag. Louis Vuitton believed that consumers would think that the knockoff bag was a genuine Louis Vuitton and that Louis Vuitton consented to the misrepresentation of the Diophy bag as a genuine Louis Vuitton handbag.
Louis Vuitton claimed that it was also harmed because the scene with the Diophy bag was frequently used in commercials and advertisements and Alan’s phrase was often repeated and quoted as a tagline from the film.
Warner Brothers moved to dismiss the case on the grounds that Louis Vuitton failed to state a claim upon which relief can be granted. The court agreed with Warner Brothers and dismissed the case.
To reach its holding, the court used the framework established in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which involves a two-pronged test.
In short, the Rogers’ test states that an artistic work’s use of a trademark, that would otherwise violate the Lanham Act, is not actionable unless (a) the use of the trademark has no artistic relevance to the underlying work whatsoever, or (b) the use of the trademark explicitly misleads consumers as to the source or content of the work.
In evaluating the first prong, the court held that Warner Brother’s use of the Diophy bag met the artistic relevance element. The court reasoned that the use of the Diophy bag, whether deliberate or unintentional, was meant to create an artistic association with Louis Vuitton, rather than a commercial association with Louis Vuitton.
As for the second prong of the Rogers’ test, Louis Vuitton argued that the determination was not limited to confusion as to the source or content of the film, but rather, extended to confusion as to the source or content of a third-party’s goods. The court rejected this argument and reasoned that Louis Vuitton alleged two distinct theories of confusion (as mentioned above): (1) that consumers would be confused into believing that the Diophy bag was a genuine Louis Vuitton bag, and (2) that Louis Vuitton consented to the use of the Diophy bag in the movie.
The court noted that neither of Louis Vuitton’s theories alleged that Warner Brothers used the Diophy bag to mislead consumers into believing that Louis Vuitton produced or endorsed the movie; therefore, Louis Vuitton failed to show confusion as to source or content of the film.
