## Facts

- Louis Vuitton Malletier, S.A. owned famous registered trademarks associated with its toile monogram pattern.
- Hyundai Motor America produced a 30-second television commercial for the 2011 Hyundai Sonata portraying “luxury” imagery in a humorous, recession-themed context.
- Hyundai sought permission from several luxury-brand owners, including Louis Vuitton, to depict their marks; Louis Vuitton did not grant permission.
- The commercial included a roughly one-second shot of a basketball bearing a repeating pattern resembling Louis Vuitton’s toile monogram, but altered (including “LZ” in place of “LV” and modifications to floral elements).
- The ad first aired during the post-game show of the 2010 Super Bowl and later ran during NBA All-Star weekend and the Academy Awards broadcast.
- Louis Vuitton sent a cease-and-desist letter asserting trademark infringement and dilution; litigation followed under federal and New York law.
- After discovery, the parties filed cross-motions for summary judgment.

## Issues

1. Whether Hyundai’s altered toile-like pattern created an actionable association that diluted Louis Vuitton’s famous marks by blurring under the TDRA and New York law.
2. Whether Hyundai’s use was exempt under the TDRA’s statutory defenses for fair use, including parody/commentary or noncommercial use.
3. Whether Hyundai was entitled to summary judgment on Louis Vuitton’s Lanham Act infringement claims based on absence of a likelihood of confusion.

## Decision

- The court granted Louis Vuitton summary judgment on liability for trademark dilution by blurring under the TDRA and New York General Business Law § 360-l.
- The court rejected Hyundai’s TDRA fair-use/parody defense, concluding no reasonable juror could find the defense satisfied on the record presented.
- The court denied Hyundai’s motion for summary judgment on Louis Vuitton’s federal trademark infringement claims, leaving infringement for later adjudication.

## Legal Principles

- Dilution by blurring occurs when similarity between a junior use and a famous mark creates an association that impairs the famous mark’s distinctiveness under 15 U.S.C. § 1125(c)(2)(B).
- Even brief and modified depictions can support dilution liability if the overall commercial impression is sufficiently similar to trigger consumer association with the famous mark.
- TDRA fair-use/parody protections under 15 U.S.C. § 1125(c)(3) do not apply where the use functions to promote the defendant’s own goods and is not primarily a parody or commentary directed at the famous mark owner or its goods.
- Summary judgment is appropriate on dilution where the evidence on similarity, fame, and association (and related statutory factors) permits only one reasonable conclusion.

## Conclusion

The court held that Hyundai’s use of an altered Vuitton-like pattern in a commercial advertisement diluted Louis Vuitton’s famous marks by blurring and that Hyundai could not invoke the TDRA’s fair-use/parody exemption on the developed record, while Hyundai failed to obtain summary judgment against the separate infringement claims.


Louis Vuitton Malletier, S.A. v. Hyundai Motor Am., 2012 U.S. Dist. LEXIS 42795 (S.D.N.Y. 2012)