You’re Getting Sued for What? An E&O Odyssey (Pt 4)

This post is part of an occasional series highlighting the type of risks which film and TV producers face and which are supposed to be covered by E&O insurance, and which aims to demonstrate that what might seem to a producer to be paranoia on the part of their lawyer is, in fact, well-founded.  These posts will point to actual lawsuits which have been filed against film/TV producers for various alleged rights infringements (whether copyright, trade-mark, right of publicity, or otherwise) – and which inform the nit-picking approach taken by producer’s counsel.

As reported by Matthew Belloni at Hollywood, Esq., the producers of “The Hangover: Part II” are being sued by Louis Vuitton Malletier, S.A., the luxury fashion manufacturer:

Luxury fashion brand Louis Vuitton filed suit in federal court in New York on Thursday alleging that a handbag featured in the movie is a fakery. In the scene, the character played by Zach Galifianakis carries a bag marked LVM and admonishes another character: “Careful, that is.. that is a Louis Vuitton.”

But the complaint (posted in full here by Paid Content) alleges that the bag is instead made by the Chinese American company Diophy, which Louis Vuitton is currently suing in an attempt to prevent knock-off items from being sold in the U.S.

Louis Vuitton says it has been damaged by the consumer confusion (“Careful, that is a Louis Vuitton.” has supposedly become a catchphrase) and claims that Warners has refused to alter the scene before the movie is released on DVD.

A copy of the complaint is available here.  A recording of the scene in question is, at least for the moment, available here on YouTube.

The complaint (the “statement of claim”, in Canadian legalese) asserts that the movie “prominently features an infringing travel bag … and misrepresents that the [infringing bag] is a genuine Louis Vuitton piece of luggage”. (Query whether a bag which appears on-screen for less than ten seconds is “prominently featured”, but let’s leave that aside for now.)  The basis of the action is primarily trade-mark related: the plaintiff asserts that the use of the bag will give rise to consumer confusion and lead viewers to conclude that Louis Vuitton authorized or otherwise condoned the use of the infringing bag.

The suit is particularly notable for at least two reasons: the brevity of the on-screen use which has given rise to the lawsuit, and the fact that it is a verbal reference to the brand which seems to have triggered the lawsuit – I suspect that many entertainment lawyers would have advised that a non-derogatory verbal usage of a brand name would not require clearance or otherwise give rise to potential liability.

Bob Tarantino

About Bob Tarantino

Bob Tarantino is Counsel at Dentons Canada LLP and focuses his practice on the interface between the entertainment industries and intellectual property law, with an emphasis on film and television production, financing, licensing, distribution, and IP acquisition and protection. His clients range from artists and independent producers to Canadian distributors and foreign studios and financiers at every stage of the creative process, from development to delivery and exploitation.

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