## Facts

- Louis Vuitton owned the famous Toile Monogram pattern and related “LV” trademarks used on luxury goods.
- Warner Bros. produced and distributed the fictional motion picture *The Hangover: Part II*.
- The film depicted a travel bag resembling Louis Vuitton’s monogram; the prop was not an authentic Louis Vuitton bag and was allegedly made by Diophy, a company previously found liable for infringing Louis Vuitton’s marks.
- In a scene, a character warned others about the bag by saying, “Careful, that is a Louis Vuitton.”
- Louis Vuitton alleged Warner Bros. intentionally used an infringing bag and the brand name to trade on Louis Vuitton’s goodwill and to dilute or tarnish the marks by associating them with an allegedly inferior counterfeit.
- Louis Vuitton sued for (1) false designation of origin/unfair competition under Lanham Act § 43(a), (2) New York common-law unfair competition, and (3) dilution under N.Y. Gen. Bus. Law § 360-l.
- Warner Bros. moved to dismiss under Rule 12(b)(6).

## Issues

1. Whether depicting a bag resembling Louis Vuitton’s marks and referencing “Louis Vuitton” in a fictional film states a plausible Lanham Act § 43(a) false designation/unfair competition claim, or is protected expressive use under the *Rogers v. Grimaldi* framework.
2. Whether the same alleged conduct states a plausible New York common-law unfair competition claim.
3. Whether the brief, in-film use plausibly alleges dilution or tarnishment under N.Y. Gen. Bus. Law § 360-l, consistent with First Amendment limits.

## Decision

- The court granted Warner Bros.’ motion to dismiss all claims with prejudice.
- The court held the film is an expressive work and the alleged trademark use was protected under *Rogers v. Grimaldi* because it had artistic relevance and was not explicitly misleading about Louis Vuitton’s sponsorship or endorsement of the film.
- The Lanham Act claim failed because the complaint did not plausibly allege confusion about the source or sponsorship of the film itself (as opposed to whether the prop bag was “real” within the story).
- The New York common-law unfair competition claim was dismissed because it was based on the same alleged confusion and failed for the same reasons.
- The dilution claim was dismissed because the alleged use was fleeting, contextually tied to characterization and humor, and did not plausibly allege dilution/tarnishment; First Amendment concerns reinforced this result.

## Legal Principles

- Under *Rogers v. Grimaldi*, trademark use in an expressive work is actionable under the Lanham Act only if (1) the use has no artistic relevance to the work, or (2) the use, though artistically relevant, is explicitly misleading as to the source or content of the work.
- The *Rogers* framework applies to trademark use within the body of an expressive work, not only to titles.
- For § 43(a) claims involving expressive works, the relevant confusion inquiry is whether consumers are misled about the source, sponsorship, or endorsement of the expressive work, not whether an in-story item is authentic.
- New York common-law unfair competition based on the same alleged confusion generally rises or falls with the Lanham Act claim.
- New York dilution under § 360-l requires a plausible likelihood of dilution (blurring or tarnishment) and is constrained by First Amendment protections for artistically relevant, non-misleading uses in expressive works.

## Conclusion

The court dismissed Louis Vuitton’s trademark, unfair competition, and dilution claims because the film’s brief depiction and reference to “Louis Vuitton” served expressive purposes, satisfied *Rogers*’ artistic-relevance requirement, and did not explicitly mislead viewers into believing Louis Vuitton sponsored or endorsed the movie.


Louis Vuitton Malletier S.A. v. Warner Bros. Ent. Inc., 868 F. Supp. 2d 172 (S.D.N.Y. 2012)