Kanye West might want to proceed with caution in using one of his favorite aliases, “The Louis Vuitton Don.” LVMH Moët Hennessy Louis Vuitton is taking aim at musicians who get a little too cozy with its trademarks.
Sony BMG Music Entertainment has agreed to pay LVMH nearly 100,000 euros, or $155,830 at current exchange, and refrain from further using its intellectual property, the fashion house said Thursday. The settlement resolves three complaints brought against the music group by Louis Vuitton Malletier for the unauthorized use of its trademarks by recording artists Britney Spears, Ruben Studdard and Da Brat. According to Louis Vuitton Malletier, the three used its property such as the Toile Monogram and Multicolore trademarks in video clips and on CDs.
This story first appeared in the August 1, 2008 issue of WWD. Subscribe Today.
The company won a total of 154,000 euros, or about $240,000, in lawsuits filed in the District Court of Paris over the last five years relating to the Spears and Da Brat infringements. The deal reached Thursday requires Sony BMG to make good on its outstanding payments in those cases of 97,000 euros, or about $151,000. The label will pay a further, undisclosed amount in relation to the Ruben Studdard case and cease distribution of the album by the “American Idol” winner, “The Return,” which contains the infringing material.
“We are very pleased to have successfully resolved these matters in a manner that protects our brand and our customers,” said Nathalie Moulle-Berteaux, intellectual property director at LVMH. “We believe the terms of this agreement will provide strong enough protection to our brand worldwide and we are gratified that Sony BMG has agreed to educate its record labels about our trademarks and copyrights in order to prevent the misuse of our intellectual property in the future.”
A phone call to Sony seeking comment on the case wasn’t returned.
Susan Scafidi, a law professor who teaches fashion law at Fordham University, said, “This is very much about control and the selectivity of celebrity endorsements.”
Scafidi, who maintains the fashion legal blog Counterfeit Chic, said that although it is common for brands to seek the approval of celebrities, they are likely to act if that approval takes a commercial turn. “These celebrities went a step further and decided to put Vuitton’s mark on their product,” she said.
The Sony BMG settlement comes on the heels of a pair of favorable trademark rulings for LVMH in its home country. In June, a French court awarded the company $61.3 million from online retailer eBay over the sale of counterfeit goods on the Web site. The ruling, and an injunction prohibiting the further sale of LVMH wares on eBay, was upheld in a court of appeals in July.
Two weeks later, Tiffany & Co. was unsuccessful in its effort to hold eBay liable for the presence of counterfeit products on its auction site.
“Vuitton doesn’t like to see the Vuitton trademark on anything other than a Louis Vuitton product,” Scafidi said. “Until Louis Vuitton starts developing singers this will probably remain the case.”