Louis Vuitton defeated in monogram handbag case
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In Louis Vuitton Malletier v Dooney & Bourke (Case 04 Civ 2990(SAS), 2008 WL 2245814, May 30 2008), the US District Court for the Southern District of New York has granted Dooney & Bourke's motion for summary judgment.
Louis Vuitton Malletier sought protection for the appearance of bags featuring two registered monogram marks "set in thirty-three colours... [and] arranged on a white or black background". Louis Vuitton challenged Dooney’s manufacture and sale of bags bearing Dooney's own monogram marks, which were also presented in multiple colours and on white or black backgrounds.
In entering summary judgment of non-infringement, the court was sceptical of the entirety of Louis Vuitton’s showing, but was most hostile to that bearing on the alleged actual confusion between the parties’ designs. As characterized by the court, Louis Vuitton had adduced evidence and testimony demonstrating that Dooney’s bags "call[ed] to mind" Louis Vuitton bags when consumers encountered the former. However, the court observed that Louis Vuitton’s evidence:
"actually demonstrates that despite the fact that one source’s bags may remind consumers of the bags of another source, consumers are generally aware that the two... designs come from different unaffiliated sources which they were able to distinguish and identify by name."
The court was also unconvinced by Louis Vuitton’s claim that some consumers mistakenly believed that Louis Vuitton had copied Dooney’s designs. As it explained:
"[such a showing] weighs in the defendant’s favour because it tends to show that consumers are not misled as to the source, sponsorship or affiliation of Dooney's products with Louis Vuitton. Indeed, they recognize that [the parties’] products are distinct and originate from different and unaffiliated sources."
As applied by the court, the aggregate of the other likelihood of confusion factors also weighed in Dooney’s favour. Although acknowledging that "there are obvious similarities between the products bearing the marks at issue", the court nevertheless found that:
"[the] plaintiff has offered no proof that the similarity in the marks is likely to confuse ordinary consumers, whether it is at the point of initial interest, point of sale or post-sale, and the differences between the marks are likely to be memorable enough to dispel confusion, even under market conditions."
As to intent, the court was unwilling to conclude that Dooney’s awareness of Louis Vuitton’s designs when producing its own constituted bad faith or an attempt to deceive consumers. Moreover, the court found that "[i]t cannot be disputed that consumers of products offered by both Louis Vuitton and Dooney are sophisticated and discerning". Under these circumstances, the strength of Louis Vuitton’s marks and the directly competitive nature of the parties’ products failed to create a justiciable issue of fact as to Dooney’s liability for infringement.
Dooney was equally successful in moving for summary judgment on Louis Vuitton’s federal and New York law dilution claims. As to the former, the court noted that Louis Vuitton’s pursuit of monetary relief required it to prove that Dooney's designs had actually diluted the distinctiveness of Louis Vuitton’s marks. Rejecting Louis Vuitton’s showing that some consumers believed that Dooney had copied Louis Vuitton’s designs, the court concluded that:
"the evidence demonstrates that, rather than eroding the strength of Louis Vuitton’s mark, some consumers who made the mental association between the marks at issue directed any ‘offence’ they may have felt from the association towards [Dooney] rather than [Louis Vuitton]."
Similarly dismissing Louis Vuitton’s claims under the New York dilution statute as a matter of law, the court held that the dissimilarities between the parties’ marks, the sophistication of their customers and Louis Vuitton’s merely de minimis evidence of Dooney’s predatory intent outweighed any significance that might be attributed to the directly competitive nature of the parties’ products.
Theodore H Davis Jr, Kilpatrick Stockton LLP, Atlanta
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