Tag Archives: Louis Vuitton

Louis Vuitton — the big IP player that keeps on giving

Ah hah!  Two of my favorite subjects, like peanut butter and chocolate, in one candy bar:

From the “On the Case” Reuters post by Alison Frankel:

To just about everyone but Louis Vuitton, the joke is obvious. Inexpensive canvas totes decorated with cartoon versions of famously expensive, iconic designer handbags? That’s funny – especially because the name of the company that makes the totes is My Other Bag, a play on the “My other car is a ” bumper stickers people used to paste on beat-up cars. To highlight the humor, the company name appears in large, loopy script on the other side of the tote bags. No one with even the faintest sense of irony would confuse My Other Bag’s $35 tote bags with actual Louis Vuitton (or Chanel, Hermes or Fendi) pocketbooks.

Louis Vuitton, of course, is famous for its inability to tolerate any ribbing, however gentle, that involves its classic toile monogram. In 2014, the company sued My Other Bag in federal court in Manhattan for trademark dilution and copyright and trademark infringement. U.S. District Judge Jesse Furman granted summary judgment to My Other Bag on all of Louis Vuitton’s claims last January, writing (with his own cheekiness) that the handbag maker “is perhaps unfamiliar with the ‘my other car’ trope. Or maybe it just cannot take a joke.” . . .

Proving that it has absolutely no sense of humor (in the unlikely event more evidence were needed), Louis Vuitton appealed the summary judgment ruling to the 2nd U.S. Circuit Court of Appeals, arguing that Judge Furman misapplied the law.

That’s when things got interesting: The case blew up into a full-fledged constitutional inquiry into the intersection of trademark law and the First Amendment.

Cool, right?  And here come the profs: Read More…

Best of 2006: Side by side comparison doesn’t decide likelihood of confusion

Originally posted 2015-01-19 14:43:43. Republished by Blog Post Promoter

Originally posted on July 11, 2006.

Dooney pattern - Thumb

Dooney’s pattern

This is an important decision: The Second Circuit Court of Appeals has partially reversed the earlier ruling of the U.S. District Court for the Southern District of New York (full decision here) in Louis Vuitton Malletier v. Dooney & Bourke, Inc.

Here’s the “money quote” as a once-great blogger taught me to say (citations and internal quotes omitted; link added) :

We turn next to the question of likelihood of confusion. . . . The similarity of the marks is a key factor in determining likelihood of confusion. To apply this factor, courts must analyze the mark’s overall impression on a consumer, considering the context in which the marks are displayed and the totality of factors that could cause confusion among prospective purchasers.’ The district court here noted that there were “obvious

10 Years of LIKELIHOOD OF CONFUSION®

10 Years of LIKELIHOOD OF CONFUSION®

similarities” between the Louis Vuitton and Dooney & Bourke handbags. However, it determined that despite the similarities, the two marks were not confusingly similar. It appears the trial court made the same mistake that we criticized in [the] Burlington Coat Factory [decision]: inappropriately focusing on the similarity of the marks in a side-by-side comparison instead of when viewed sequentially in the context of the marketplace.

The district court reasoned:

Read More…

Trademark parodies and iconic marks: can foul become fair?

In 2010 I wrote this post about a now-notorious case, eventually ensconced as Louis Vuitton Malletier, S.A. v. Hyundai Motor America, 2012 WL 1022247 (S.D.N.Y., March 22, 2012) and covered intensely (as the links there indicate) by Marty Schwimmer among others, in which the Southern District of New York ruled that the Hyundai’s use of the iconic trademarks depicted on the basketball shown was not fair use.

Going against type, I argued that the plaintiff had something legitimate to say for its litigation approach, at least, considering everything; many others found the outcome quite unsatisfactory, urging that the use should have been viewed as that often claimed, but seldom seen, species of fair use called parody.  Evidently, as Mr. Schwimmer now reports, history is moving in favor the “anti’s”:

my-other-bag-beige-zoey-tote-product-1-16432681-3-104253920-normalclassic-zoey-mono2-257x300Followers of the legal treatments of parodies of trademarks may want to skip immediately to footnote 4 of the decision.

You see the top two pictures [at right]? One side of the bag says ‘My Other Bag …” and the other side is a depiction of an LV bag. Get it? Ok, that’s fair use. LV’s causes dismissed.

You see the picture of the ‘LV’ basketball [above]? The SDNY ruled in 2012 that that was actionable. And now this SDNY court says in footnote 4 that it won’t follow Hyundai.

And what, indeed, is in the bag that is Footnote 4?:

Even if Hyundai were not distinguishable, this Court would decline to follow it. In the Court’s view, the Hyundai Court blurred the distinction between association and dilution. As discussed in more detail below, association is a necessary, but not sufficient, condition for a finding of dilution by blurring. See, e.g., Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433 (“[T]he mere fact that consumers mentally associate the junior user’s mark with a famous mark is not sufficient to establish actionable dilution. . . . [S]uch mental association will not necessarily reduce the capacity of the famous mark to identify the goods of its owner.”).

That’s the way the ball bounces!

Ruff times for Vuitton

Chewy Vuitton

IP Law Chat reports that LVMH has lost its appeal (decision here) of the “Chewy Vuitton” decision. Here’s an interesting sidelight, and one that may have reverberations beyond this case:

[T]he strength and distinctiveness of the LOUIS VUITTON mark worked against Louis Vuitton in the context of its dilution by blurring claim, making it more likely that a parody (at least an obvious one) will not impair the distinctiveness of the famous mark.

Clients like this — Europeans — must be foaming at the mouth about this one, because European “industrial property” law works entirely differently. But the Fourth Circuit didn’t even throw LVMH a bone.

UPDATE:  I’m reminded that I predicted a reversal.  Me, wrong.

Side by side comparison doesn’t decide likelihood of confusion

Dooney's pattern

Dooney’s pattern

This is an important decision: The Second Circuit Court of Appeals has partially reversed the earlier ruling of the U.S. District Court for the Southern District of New York (full decision here) in Louis Vuitton Malletier v. Dooney & Bourke, Inc.

Here’s the “money quote” as a once-great blogger taught me to say (citations and internal quotes omitted; link added) :

We turn next to the question of likelihood of confusion. . . . The similarity of the marks is a key factor in determining likelihood of confusion. To apply this factor, courts must analyze the mark’s overall impression on a consumer, considering the context in which the marks are displayed and the totality of factors that could cause confusion among prospective purchasers.’ The district court here noted that there were “obvious similarities” between the Louis Vuitton and Dooney & Bourke handbags. However, it determined that despite the similarities, the two marks were not confusingly similar. It appears the trial court made the same mistake that we criticized in [the] Burlington Coat Factory [decision]: inappropriately focusing on the similarity of the marks in a side-by-side comparison instead of when viewed sequentially in the context of the marketplace. The district court reasoned:

Read More…

They’ll always have Paris: Vuitton sues eBay

They did the deed, or filed le writ, in France, where their chances of success — based on the last few years of pro-mark-owner decisions, plus the creeping incoherence of U.S. jurisprudence on trademark use on the Internet — are far better. We’ve thought about this topic before (PDF), if I haven’t mentioned that lately, and as skeptical as I am of the use of trademark law as a way to control distribution channels, I believe this is a cause of action that can fly — mainly because the big stinker in online auctions of luxury goods is that most of them are counterfeits.

“Too big a market to police,” cries eBay — I’ve been in the room when they’ve said this. Ah, yes, perhaps — but not at those profit margins (link added January 23rd). He who creates the problem, and profits from the problem, and controls the technology that perpetuates the problem, is the one who should bear the cost of solving the problem.

UPDATE:  Vuitton wins, eBay not so much.

Who is Malletier?

Jack Russell MalletierIn 2009 I did a post whose title — “Excuse Me While I Kiss this Guy” — was an homage to the great modern institution of mangled popular song lyrics.  That particular neurological “take” on Jimi Hendrix’s wailed request in “Purple Haze” is so prevalent that an entire website dedicated to misheard song lyrics is actually called “Kiss This Guy,” and beat me to the punch by three years.  Who knew?

Knowing, it seems, is the key.  That “kiss this guy” mistake is probably based as much on the cognitive dissonance implicated in the brain’s processing of the real lyric, “Excuse me while I kiss the sky,” as any failure to enunciate by the late, great stoned Englishman Hendrix.  “Kiss the sky” is just not in our neural “type-ahead” cache, and while you might not think “kiss this guy” actually is, well, turns out it is.  Oddly enough.

Same thing with names.  Pattern recognition and familiarity are all.  Everyone, after all, knows what “a Louis Vuitton” is, and wants one — real or not. The result has been years of fun and, for many of those I love, profit.

Louis Vuitton Malletier, Plaintiff Even I had my moments on that score, and when, as a much younger man, I was tasked to hop on an Amtrak and sue a trademark counterfeiter on LVMH’s behalf in the Eastern District of Pennsylvania, I was happy to do it.  (The “LV” is for Louis Vuitton; the M is not for Malletier, in fact — the “MH” is for Moët Hennessy.  Together, they’re a “group.”)  The resulting decision, Malletier v. Veit, was kind of important for about ten minutes.

But who is that plaintiff?  Who is this Malletier guy?

The plaintiff in my case, of course — and in Malletier v. Dooney & Bourke, and a whole bunch of other cases — was not a guy named Louis V. Malletier.  Of course.  You knew that.  It is, rather, the firm called Louis Vuitton Malletier — and as you also knew, a “malletier is, in French, literally a trunk-maker, or manufacturer of luggage and suitcases.”  It comes from the French word malle, which means trunk but related, as is readily evident, to the word “mallet” for hammer.

But, of course: Louie the Trunk-Maker. Read More…

Don’t mess with Louis

Mohammed Sharif, with his inimitable excitement about the whole thing, posts on his Fame Appeal blog about —

An evening at Louis Vuitton headquarters in NYC, [at which]  Michael Pantalony Esq., protector of Intellectual Property of Louis Vuitton Moet Hennesey Fashion Group (LVMH) stated “If you come close to copying the (Louis Vuitton) Mark you will hear from LV”

Pantalony was the keynote speaker the a CLE program held by the Fordham Fashion Law Institute, as it turns out, which I would have certainly been interested in attending if I’d known about it.  But that is blocks away from here.

Anyway, I can vouch for the sentiments:  Sooner or later you will, indeed, hear from LV — one company that has bona fide infringement problems and, from what I can tell, does not push the envelope unreasonably.  Indeed, if anything, LV counterfeiting is so ubiquitous that its enforcement program stands for the proposition that all the law in the world and all the lawyers — and good ones — can’t solve certain legal problems.

My point being, that doesn’t mean still more law, or lawyering, will do so.  To the contrary, what do they say about someone who keeps doing something over and over again and expecting different results?

That does not mean I do have a solution for LV’s problems.  I don’t.  And I have tried.

Home cookin’ a la mode, with a most undeserving dessert

From the WSJ Law Blog:

A French court today cracked down on counterfeits — and an outlet that sells them — ordering eBay to pay Louis Vuitton and other luxury brands — Kenzo, Guerlain, Dior and Givenchy — $63.1 million in damages for auctioning fake goods. Here’s the early story from WSJ. . . .

“I was really surprised by the number,” J. Michael Huget, the head of IP at Butzel Long, told the Law Blog. “There’s definitely a hometown flavor to it. I don’t know how you get there on a disgorgement of profit basis, unless there’s some unique penalty provision that exists under French law. But even with that, it’s not like it’s a company that’s gone over there and hurt people. You don’t want to discount the value of a brand, but that’d be a huge number even in our system.”

Well, unless there’s some, like, Frenchie legal reason for it, yeah? I’d run that down. Genuine expertise demonstrated by Butzel Long, and crack reporting there by the WSJ! I blame the reporter more than I do Michael Huget. Wouldn’t want to have to dial another number and risk finding out that law part.

On the other hand… “it’s not like it’s a company that’s gone over there and hurt people”? Oh, is that the test, then, given what we… know? … about French law? Remember, Michael, what our teeny dollars look like to Europeans!

Oh, all right. It does sound like a huge number. Yet on the other hand — hometown-wise, frankly I couldn’t blame the French (yes, I did just write that) for getting the impression that there’s only one way to get eBay’s attention?

Having said all that — this is actually really troubling:

As for perfumer-plaintiffs Kenzo, Guerlain, Dior and Givenchy, the judge ruled that, even though the perfumes sold by eBay were legitimate, the company was liable for unauthorized sales. LVMH strictly limits their distribution to authorized dealers such as perfume chains and department stores.

Oh no. No!!!!!!  Now what do I do?!

(Jaunty beret-tip to Marty.)