Louis Vuitton handbags focus of infringement action in 2nd Circuit
Helen Nguyen
(This article was originally published in The Daily Record, Rochester, N.Y., another Dolan Media publication).
What would a woman do without her handbag or purse?
This is what the U.S. Court of Appeals for the Second Circuit noted in a trademark infringement case involving Louis Vuitton handbags when it wrote: We cannot help but observe that for the person carrying it, a handbag may serve as a practical container of needed items, a fashion statement or a reflection of its owner’s personality; it may fairly be said that in many cases a handbag is so essential that its owner would be lost without it.
For companies such as Louis Vuitton, handbags are a multimillion dollar industry. In Louis Vuitton Malletier v. Dooney & Burke, the Second Circuit concluded that the district court erred when it denied Louis Vuitton’s motion for a preliminary injunction against Dooney & Bourke, which produces a purse known as the It Bag. The circuit court determined the district court’s analysis did not accurately reflect the actual market conditions in which both parties’ handbags were sold. Therefore, the Second Circuit remanded the case to the district court for further proceedings.
Parties, Infringement claims
At the center of the case are handbags made and sold by both parties.
Louis Vuitton, a French fashion design firm, is known for its toile monogram designs that feature entwined LV initials with three motifs: a curved diamond with a four-point star inset, its negative, and a circle with a four-leafed flower inset. The toile designs were first introduced in France in 1896 and are registered with the U.S. Patent and Trademark Office.
In October 2002, the company introduced a collection of handbag designs that feature a multicolore pattern or mark. The new multicolored handbags contained a modified version of the toile marks and were printed in 33 bright colors on either a white or black background. The multicolore mark is unregistered. The handbags have appeared on television programs like CBS’s The Early Show, and in USA Today, The New York Times and People.
Louis Vuitton contends Dooney & Bourke infringes on its multicolore trademark through the sale of a similar looking line of handbags known as the It Bag. The It Bag features a DB monogram of interlocking initials in an array of bright colors set against a white background.
Dooney & Bourke’s purses cost $125 to $400; the multicolore handbags and accessories by Louis Vuitton typically cost $360 to $3,950.
Lawsuit, preliminary injunction
In April 2004, Louis Vuitton filed a lawsuit in federal court, in which it alleged that Dooney & Bourke infringed on its trademark in violation of the Lanham Act.
Louis Vuitton asserted federal and state claims of unfair competition and false designation, and trademark dilution. Although the company does not claim a trademark to the overall look of its handbags and states that other manufacturers have a right to create their own brightly colored handbags, it does seek to protect others from producing handbags that incorporate a similar multicolore mark and design pattern.
While the case was being litigated, Louis Vuitton sought a preliminary injunction. In August 2004, the U.S. District Court for the Southern District of New York denied the company’s motion, holding that it was unlikely that consumers would confuse Louis Vuitton’s multicolore mark with Dooney & Bourke’s It Bag pattern.
Specifically, the district court wrote: It could not be more obvious that Louis Vuitton uses the initials ‘LV,’ while Dooney & Bourke uses its trademarked ‘DB’ logo. Thus, a consumer seeing these trademarks printed on these bags, either up close or at a distance, is not likely to be confused.
Louis Vuitton appealed the district court’s decision. It argued that the district court blurred its trademark by reducing it to an undefined and unprotectable look, and focused improperly on a side- by-side comparison to assess whether consumers would be confused between the two handbags.
Likelihood of consumer confusion
The Second Circuit found that the district court erred in its analysis of whether consumers would be confused between the two design marks by Louis Vuitton and Dooney & Burke. Based on these factors, the Second Circuit found that the district court’s analysis did not accurately reflect the actual market conditions in which Louis Vuitton and Dooney & Bourke’s handbags were sold.
Dilution claim
The Federal Trademark Dilution Act states, The owner of a famous mark shall be entitled … to an injunction against another person’s commercial use in commerce of a mark or trade name if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark.
The Second Circuit found that Louis Vuitton was not entitled to a preliminary injunction based on its dilution claim because the company failed to provide any evidence of actual dilution.
State law claims
Although the court said Louis Vuitton had to show actual dilution under federal law, the court pointed out the standard for a dilution claim under New York law was less strict because state law required only a mere likelihood of dilution. The court therefore determined that the case must be remanded with regard to this issue.
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