Malletier v. Dooney & Bourke, Inc.
| Decision Date | 27 August 2004 |
| Docket Number | No. 04 Civ. 2990(SAS).,04 Civ. 2990(SAS). |
| Citation | 340 F.Supp.2d 415 |
| Parties | Louis Vuitton MALLETIER, Plaintiff, v. DOONEY & BOURKE, INC., Defendant. |
| Court | U.S. District Court — Southern District of New York |
Theodore C. Max, Kevin N. Ainsworth, Charles A. LeGrand, Mintz Levin Cohn Ferris Glovsky and Popeo P.C., New York, New York, Howard J. Susser, Mintz Levin Cohn Ferris Glovsky and Popeo P.C., Boston, Massachusetts, for Plaintiff.
Douglas D. Broadwater, Roger G. Brooks, David Greenwald, Cravath, Swaine & Moore LLP, New York, New York, Thomas J. McAndrew, Thomas J. McAndrew & Associates, Providence, Rhode Island, for Defendant.
This case involves the Court in the world of haute couture, where Louis Vuitton Malletier ("Louis Vuitton"), armed with state and federal trademark law,1 seeks to prevent Dooney & Bourke, Inc. ("Dooney & Bourke") — and all others — from trespassing in what it perceives as its fashion "territory."
The trouble began in October 2002, when Louis Vuitton, an industry leader, premiered a fresh, exciting concept — printing its famous "LV" and geometric shapes in an array of bright, crisp colors on white and black handbags ("Monogram Multicolore" marks). As often happens in the fashion world, this multicolored monogram "look" was instantly and wildly popular. Dooney & Bourke, one of many handbag manufacturers to follow in the trend, launched a line of its own bags featuring its "DB" monogram (without geometric ornamentation) in a multicolored array.
Objecting to its legion of imitators,2 Louis Vuitton has sued Dooney & Bouke, seeking refuge under both federal and state law governing intellectual property rights. The problem is that Dooney & Bourke did not use Louis Vuitton's logo (an intertwined "LV") or famous Toile Monogram on its bags. Rather, Dooney & Bourke used a multicolored "DB" monogram on both a white and black background. This emulation of the certain features of the Louis Vuitton bags, however, does not reflect Dooney & Bourke's intention to deceive customers into concluding that the product derives from Louis Vuitton.3
Louis Vuitton created a new look and now seeks to preclude others from following its lead. If Louis Vuitton succeeds, then it will have used the law to achieve an unwarranted anticompetitive result. It is well established that the objective of trademark law is not to harm competition. To the contrary, the Supreme Court has noted that trademark law "seeks to promote competition by protecting a firm's reputation" but does not permit legitimate competition to be inhibited by "allowing a producer to control a useful product feature."4 Put another way, "[a] trademark is not a property right, but an identifier; so, provided no one is likely to be confused by the alleged infringer, there is no impairment of the interest that the trademark statute protects."5 Distilling the voluminous submissions to their essence, it is quite clear that Louis Vuitton cannot prevail on its plea for injunctive relief. To hold otherwise would not only contravene settled law, it would grant Louis Vuitton monopoly rights over a "look" — a multicolored monogram against a white or black background.6 In connection with this motion, the parties have collectively submitted close to 20,000 pages of material. But no amount of expert opinion, legal analysis, or demonstrative evidence can overcome the clarity that comes from direct observation. The following pictures of the competing products demonstrate the point.7
Louis Vuitton, which has its principal place of business in Paris, France, manufactures, imports, sells, and distributes high fashion apparel, designer luggage, handbags, and leather accessories throughout the world, including New York. Dooney & Bourke makes and sells quality handbags and other fashion accessories, and maintains its principal place of business in Connecticut.9
Louis Vuitton owns various trademarks, including three that protect the individual elements of its celebrated "Toile Monogram."10 Created in 1896, the Toile Monogram features "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."11 These elements appear on apparel and accessories sold worldwide in "Louis Vuitton freestanding boutiques and in-store boutiques in the finest department stores, including Saks Fifth Avenue, Bloomingdale's, Nieman Marcus, and Macy's."12 The Toile Monogram is traditionally printed in gold against a dark chestnut background.13
In 1997, Louis Vuitton hired fashion designer Marc Jacobs, who now serves as the "Artistic Director for its Louis Vuitton fashion apparel and accessory design lines, as well as his own signature lines."14 In 2002, Jacobs contacted Japanese artist Takashi Murakami to collaborate in the "revitalization" for the new millennium of the traditional Louis Vuitton monogram.15 To that end, on July 16, 2002, Murakami, Jacobs and other Louis Vuitton and Kaikai Kiki, LLC (Murakami's New York-based company) employees met at Louis Vuitton's Paris offices.16 The resulting relationship resulted in the creation of four handbag and accessory collections premised on the Toile Monogram Trademarks:
[(1)] the Monogram Cherry Blossom, featuring a pattern of the Louis Vuitton Toile Monogram with cherry blossoms; [(2)] the Eye Love Monogram, featuring a colorful pattern of the Louis Vuitton Toile Monogram with a Murakami eye symbol; [(3)] the Monogram Multicolore, offering a visionary and avant-garde version of the [Toile Monogram] in thirty-three colors; and [(4)] a collection of Murakami characters featured on the Louis Vuitton Toile Monogram pattern.17
These patterns are printed through a process of silk-screening onto the treated canvases of handbags with "straps and handles made out of natural calf's hide leather and hand-applied colored trim ... finished with [yellow] double-stitched edging and shiny gold hardware."18 Thirty-three "very specific" colors, selected by Murakami from his palette, are used in connection with the Monogram Multicolore marks.19 In particular, the Monogram Multicolore marks depict the traditional interlocked initials "LV" and geometric shapes presented in a repeating pattern; however, the Toile Monogram is not printed in gold against chestnut, but in a panoply of bright colors set against a white or black background.20 The Eye Love Monogram differs from the Monogram Multicolore in that the "circle flower" has been replaced by a signature Murakami "jelly fish eye."21
The Murakami bags were launched on October 7, 2002 at Louis Vuitton's Spring 2003 fashion show in Paris, France.22 These handbags, which were first distributed to retail stores in March 2003 (with a white background), met with "overwhelmingly favorable response,"23 and according to Louis Vuitton were dubbed by the media as one of the "must have" or "it" bags of the season.24 Consumers, including celebrities such as Janet Jackson, Elton John, and Reese Witherspoon, instantly expressed interest in purchasing a bag.25 In July 2003, Louis Vuitton offered the Monogram Multicolore bags in black.26 When the Complaint was filed, nearly 70,000 Monogram Multicolore handbags and accessories (over $40 million) had been sold in the United States, of which approximately $25 million was attributable to the white bags and $16 million to the black bags.27 These bags range in price from an estimated $360 to $3,950.28
Dooney & Bourke, a company that has been in the handbag business since 1975, has sold bags bearing a repeated pattern of its interlocking initials ("DB") from 2001, when it launched its "Signature" and "Mini Signature" lines.29 This "DB" monogram is a registered trademark that is not limited to a particular color.30 In conjunction with Teen Vogue, Peter Dooney began working with a team of girls selected by the magazine — dubbed the "It Team" — to create Dooney & Bourke handbags with appeal to teenagers.31 To that end, Dooney and the It Team traveled to Milan in March 2003, where they were photographed peering into a store window featuring a Monogram Multicolore display in white, and viewing a black Monogram Multicolore swatch in a factory.32 Dooney testified that seeing the Monogram Multicolore served to "reinforce" his "thinking" that "white and these happy colors, confetti looks and so forth were ... were moving forward and people liked them."33
In late July 2003, Dooney & Bourke introduced its "It-Bag" collection, featuring the "DB" monogram (used in the Signature Line) in bright colors against a white background.34 In October 2003, Dooney & Bourke began selling these handbags in black.35 The It-Bags display interlocked initials "D" and "B," printed in a forward and reverse pattern in an appreciably smaller font size than used on the Louis Vuitton bags. The "D" and "B" of each monogram are printed in different colors.36 Like the Louis Vuitton Murakami bags, the It-Bags have "leather straps or handles and/or single-colored leather borders and shiny gold metal hardware."37 But, in contrast to the Murakami bags, those made by Dooney & Bourke have multicolor zippers; a variety of colored backgrounds (e.g., periwinkle, grape, and bubble gum in addition to black and white); and a pink enameled heart with the words "Dooney & Bourke" written in gold script hanging by a leather strap from each Dooney & Bourke It-Bag.38 The It-Bag Collection is Dooney & Bourke's largest revenue source, presently comprising nearly half of its total sales.39
According to Barbault, Louis Vuitton first became aware of Dooney & Bourke's intention to...
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