Louis Vuitton Malletier, S.A. v. Hyundai Motor America

2012 U.S. Dist. LEXIS 42795 (2012)

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Louis Vuitton Malletier, S.A. v. Hyundai Motor America

United States District Court for the Southern District of New York
2012 U.S. Dist. LEXIS 42795 (2012)

  • Written by Ann Wooster, JD

Facts

Hyundai Motor America (Hyundai) (defendant) was the manufacturer of automobiles with a poor brand image among consumers. Hyundai wanted to improve the brand image for its new 2011 Sonata mid-sized sedan by creating a luxury commercial advertisement (the commercial) that was intended to be a humorous commentary redefining the concept of luxury during a recession. Hyundai requested permission to display a variety of luxury-brand trademarks in the commercial, including the toile monogram owned by Louis Vuitton Malletier, S.A. (Vuitton) (plaintiff). The toile monogram was a repeating pattern design of the letters “LV” with flower-like symbols on a chestnut-brown background. Vuitton never responded to Hyundai’s request for permission to use the toile monogram. Hyundai created the 30-second commercial using a one-second shot of a basketball decorated with a distinctive pattern that resembled Vuitton’s toile monogram. Hyundai’s pattern used the letters “LZ” and made small modifications to certain elements of Vuitton’s trademarks, including their proportions. Hyundai aired the commercial during the post-game 2010 Super Bowl show. Vuitton sent Hyundai a cease-and-desist letter and claimed that the commercial infringed Vuitton’s registered trademarks for a pinwheel design, a diamond with an inset pinwheel design, and a circle with an inset flower design. Hyundai aired the commercial three more times during the National Basketball Association’s All Star Game weekend a few days later. Vuitton brought a trademark-infringement action against Hyundai, claiming that the commercial diluted the toile-monogram trademarks in violation of the Trademark Dilution Revision Act of 2006 (TDRA). Vuitton argued that the commercial diluted the trademarks by blurring them through an association that impaired the trademarks’ distinctiveness. A few weeks later, Hyundai ran the commercial for the last time during the Academy Awards. Vuitton moved for summary judgment on the trademark-dilution claims.

Rule of Law

Issue

Holding and Reasoning (Castel, J.)

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