LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.

• Decision Date: 13 September 2016
• Docket Number: 14 Civ. 4869 (PAE)
• Citation: 209 F.Supp.3d 612
• Parties: LVL XIII BRANDS, INC., Plaintiff, v. LOUIS VUITTON MALLETIER S.A. and Louis Vuitton North America, Inc., Defendants. Louis Vuitton Malletier S.A. and Louis Vuitton North America, Inc., Counterclaim-Plaintiffs, v. LVL XIII Brands, Inc., Counterclaim-Defendant.
• Court: U.S. District Court — Southern District of New York

209 F.Supp.3d 612

LVL XIII BRANDS, INC., Plaintiff,

v.LOUIS VUITTON MALLETIER S.A. and Louis Vuitton North America, Inc., Defendants.

Louis Vuitton Malletier S.A. and Louis Vuitton North America, Inc., Counterclaim-Plaintiffs,

v.LVL XIII Brands, Inc., Counterclaim-Defendant.

14 Civ. 4869 (PAE)

United States District Court, S.D. New York.

Signed September 13, 2016

Joel Geoffrey MacMull, Ronald David Coleman, Brian Farkas, Goetz Fitzpatrick LLP, New York, NY, for Plaintiff.

Jonathan Daniel Lupkin, Lupkin & Associates PLLC, Melissa Yang, Rakower Lupkin PLLC, New York, NY, Hannah Yeon Mee Jurowicz, Robert E. Shapiro, Shermin Kruse, Vito Salvatore Solitro, Wendi Elizabeth Sloane, Barack, Ferrazzano, Kirschbaum, Perlman & Nagelberg, L.L.P., Chicago, IL, for Defendants.

OPINION & ORDER

PAUL A. ENGELMAYER, District Judge

In this trademark lawsuit, two fashion companies go toe-to-toe over the right to affix a metal plate to the toe of "luxury" men's sneakers. Plaintiff LVL XIII Brands, Inc. ("LVL XIII," pronounced "Level 13") is a New York start-up company that manufactures, markets, and sells men's luxury athletic footwear. LVL XIII brings this action against defendants Louis Vuitton Malletier S.A. and Louis Vuitton North America, Inc. (collectively, "LV"). It claims that LV, through its marketing and sale of the On the Road Sneaker ("OTR Sneaker"), infringed LVL XIII's trademark rights in a metal toe plate (the "TP") which was featured on all shoes in LVL XIII's first sneaker collection.

LVL XIII brings claims for (1) trademark infringement, unfair competition, and false designation of origin, under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) ; (2) New York common law unfair competition; and (3) deceptive business practices, under New York General Business Law ("GBL") § 349. It seeks actual and punitive damages, costs and fees, and an injunction barring LV from selling footwear bearing the allegedly infringing toe plate.

In response, LV brings counterclaims for (1) a declaratory judgment, under 28 U.S.C. § 2201, that LVL XIII has no exclusive right in the shape of a rectangular metal toe plate; and (2) an injunction requiring LVL XIII to disclaim the non-distinctive elements of the TP. Separately, it brings counterclaims for trademark infringement, unfair competition, and false designation of origin under the Lanham Act, based on LVL XIII's alleged infringement of LV's monogram mark (the "Initials Logo"). In connection with those counterclaims, LV seeks damages, costs and fees, and an injunction barring LVL XIII from continuing to use its "LVL XIII" mark or any other mark confusingly similar to the Initials Logo.

The parties have filed cross-motions for summary judgment on each of LVL XIII's claims. In connection with its summary judgment motion, LV has also moved to preclude the report and testimony of LVL XIII's expert witness. Separately, LVL XIII has moved for summary judgment on each of LV's counterclaims.

For the reasons that follow, the Court grants (1) LV's motion to preclude LVL XIII's expert; (2) LV's motion for summary judgment on each of LVL XIII's claims; and (3) LVL XIII's motion for summary judgment on each of LV's counterclaims. The Court denies LVL XIII's motion for summary judgment on its own claims.

The end result is that all claims in this lawsuit are dismissed.

I. Background

A. Factual Background¹

1. LVL XIII and its First Sneaker Collection

a. The Launch of LVL XIII's First Sneaker Collection

LVL XIII is a New York start-up company founded by Antonio Brown. JSF ¶¶ 1-2. Brown long had the goal of starting a luxury footwear company; in the mid-2000s, he began to collect images of shoes as a hobby. Def. Supp. 56.1 ¶ 277. In summer 2012, Brown began soliciting capital contributions from friends and family, and recruiting artists and graphic designers, to help bring his visions to life. See id. ¶¶ 278-80. The designs that would serve as the basis for LVL XIII's first sneaker collection were developed in September and October 2013. See id. ¶¶ 281, 284. Sometime thereafter, they were submitted to a factory in Hong Kong to be made into samples. Id. ¶ 285. Each design featured the TP—a rectangular metal toe plate with a "LVL XIII inscription" secured to the front outsole of the sneaker by metal screws. See MacMull Decl., Ex. 5. Brown testified that he wanted the TP to "distinguish [his] brand from the market"—to be something that could "identify [his] shoe design from the rest of the shoes." MacMull Decl., Ex. 1 ("Brown Dep. I"), at 137.

In December 2012, LVL XIII was incorporated in New York. Def. Supp. 56.1 ¶ 286. By March 2013, it began preparing a formal business plan with the help of a third-party vendor. Id. ¶ 287. The business plan was completed and distributed to investors sometime after November 2013. Id. ¶ 288. It states that "LVL XIII believes its typical consumer will be an affluent male between the ages of 17 and 35 years of age who appreciates luxury goods and typically shops for designer labels." JSF ¶ 13.²

In January 2013, LVL XIII hired Lamont Johnson to serve as its publicist. Sloane Decl., Ex. 3 ("Brown Dep. III"), at 172. Brown testified that because LVL XIII was operating on a "shoestring budget," he and Johnson knew it would be hard to obtain formal ad placements in major publications. MacMull Decl., Ex. 2 ("Brown Dep. II"), at 173-74. Accordingly, he testified, the two men "creatively came together... [and devised] creative ways to submit the brand for press and publicity[,] like ceding shoes to celebrities and ... editors ... [to] garner[ ] interest." Id. at 174.³ One of those celebrities was pop star Jason Derulo, who, on July 19, 2013, performed on Good Morning America wearing LVL XIII sneakers. Def. Supp. 56.1 ¶ 296.⁴ Another was pop star Chris Brown, who, in September 2013, wore a pair of LVL XIII sneakers during a photo shoot for Annex Man Magazine. Id. ¶ 301.⁵ According to Brown and Johnson, LVL XIII sneakers were also publicly worn by Kroy Biermann, Jim Jones, DeRay Davis, and Chris Rock. Id. ¶ 331.

In addition to reaching out to celebrities, LVL XIII leveraged its social media presence to garner free publicity. See id. ¶¶ 298-99. In April 2013, Brown began posting images of LVL XIII sneakers on his personal Instagram account, which, by then, had 50,000 followers. Id. ¶ 300; see Sloane Decl., Ex. 39 ("Media Placements"), at 1.⁶ In June 2013, LVL XIII posted its first Instagram. See Media Placements, at 1; Sloane Decl., Ex. 6 ("Johnson Dep. I"), at 66-67. Brown testified that social media has been a cornerstone of LVL XIII's brand development. Def. Supp. 56.1 ¶ 298.

Between July 21 and 23, 2013, LVL XIII debuted its first sneaker collection at the Project Sole event in New York City. Id. ¶ 293. There, samples of LVL XIII sneakers were displayed to retailers, from whom LVL XIII began taking orders and deposits. Id. ¶ 295; JSF ¶ 21. At the end of the event, male supermodel Tyson Beckford hosted a launch party for LVL XIII in New York City. Def. Supp. 56.1 ¶ 294. In August 2013, LVL XIII exhibited its sneakers at the Magic Show, a trade show in Las Vegas attended by wholesalers, retailers, press, and celebrities. Id. ¶ 302.

In the months that followed, Brown and LVL XIII were featured in a handful of online magazines including Details, Ebony, Paper, and Footwear News. Id. ¶ 297. The majority of the brand's media coverage, however, was on social media platforms and online blogs. See Media Placements.⁷ LVL XIII estimates that, in 2013, it spent a total of approximately $82,000 in connection with marketing, advertising, and promotion. JSF ¶ 35.⁸ Of that, approximately $15,000 was spent on the New York launch party, approximately $10,000 on the Project Sole Trade Show, approximately $10,000 on the Magic Show, and approximately $30,000 on monthly payments to LVL XIII's publicist. Pl. 56.1 ¶ 163; Brown Dep. II, at 172-73; Def. Supp. 56.1 ¶ 330. Brown testified that LVL XIII did not engage in TV advertising or purchase any newspaper or magazine advertisements. Brown Dep. I, at 158-59. As he explained, he "didn't feel like it was necessary to invest [LVL XIII's] dollars into print ads and things of that nature, especially with the dying business of print publications this day and age." Brown Dep. II, at 175-76.

In November 2013, LVL XIII's first sneaker collection became available for purchase at retail. Pl. 56.1 ¶ 230. LVL XIII produced 1,000 pairs of sneakers for it, each of which featured the TP. JSF ¶ 31; Def. Supp. 56.1 ¶ 325. The sneakers were sold at prices between $495 and $1,200, with most priced between $495 and $595. Pl. 56.1 ¶¶ 154-55. Between November 2013 and March 2014, they were sold in at least 10 locations, including in Houston, Texas; Atlanta, Georgia; Los Angeles, California; Harvey, Illinois; Chicago, Illinois; Miami, Florida; and Washington D.C. Id. ¶ 234. They were also sold through the Carbon Bazaar website. Id. ¶¶ 246-47.⁹ LVL XIII estimates that it sold approximately 500 pairs of sneakers from its first collection. JSF ¶ 32. The remaining 500 pairs were returned to LVL XIII to be donated. Id. ¶ 33. In total, LVL XIII achieved $141,241 in product sales in 2013. Id. ¶ 34.¹⁰

b. LVL XIII's Efforts to Obtain Trademark Protection for its Marks

In March 2013, LVL XIII filed two trademark registration applications with the U.S. Patent and Trademark Office ("PTO"). JSF ¶¶ 11-12. The first (the " '370 Application"), filed on March 4, was for the word mark "LVL XIII." Id. ¶ 11. The second (the " '102 Application"), filed on March 6, sought registration for a "shoe toe design featuring a rectangular metal plate across the front of the shoe toe with the wording LVL XIII engraved in the metal plate, and four small screws in the corners of the metal plate." Id. ¶ 12; Sloane Decl., Ex. 32, at 1.

On June 24, 2013, the PTO issued a non-final Office Action as to the '102 Application, requiring LVL XIII to submit a new drawing showing the screws in dotted lines, "as they cannot be part of the...