Legally Louis: The Legal History of Louis Vuitton

Introduction:

Louis Vuitton Malletier has been a leading name in fashion for over one hundred and fifty years. Not only has the name brand been an innovator in the fashion world, but has struggled with and challenged the Intellectual Property laws in the United States as well, pushing U.S. Intellectual Property protection for fashion to its limits. Historically and contemporarily, Louis Vuitton has been and continues to be a force to be reckoned with, vigorously protecting its trademark and reputation as a brand – and continues to look good in the process.

General Background and Legal History of LVM:

Louis Vuitton Malletier (“Louis Vuitton”) is a luxury fashion company, headquartered in Paris, France. Not only is the company headquartered in Paris, but also it is organized and exists under French law.1 As one of the oldest fashion names in the world, originating in 1854, Louis Vuitton is especially known for its luggage bags and purses. In addition, the company manufactures a variety of items including high quality leather products, wallets, clothing, sunglasses and most recently, jewelry in the form of charm bracelets.2

Louis Vuitton’s signature calling card is its Toile Monogram featuring the interlocking initials LV interspersed with geometric shapes.3 The monogram was created by George Vuitton in 1896 as a reaction to his goods being counterfeited.4 The traditional monogram portrays the interlocked initials and geometric shapes in gold against a dark chestnut background.5

Currently, the company has six trademarks registered with the United States Patent and Trademark Office. Of these six, three of these trademarks are incontestable. An incontestable trademark is one that is federally registered and has been continuously used for five consecutive years.6 When a mark is incontestable, the mark assumes a non-rebuttable presumption of validity, registration and ownership.7 An incontestable mark may still be challenged on other grounds, such as the mark has been abandoned or that the mark has become generic.8 Therefore, in an infringement action, a party cannot argue that the mark is an invalid subject for trademark protection or that the holder’s trademark rights in the mark are invalid.9 Three of Louis Vuitton’s incontestable marks protect the individual elements of the original Toile Monogram: the curved diamond with four-point star inset; the circle with a four-leafed flower inset; and the negative of the curved diamond with the four-point star inset.10 Louis Vuitton also has registered the trade name “LOUIS VUITTON” as well as trademark in the initials “LV”.11 Other Louis Vuitton trademarks registered with the United States Patent and Trademark Office include the following: the interlocking LV initials in a circle design; the LV initials and Monogram Canvas Design; LOUIS VUITTON MALLETIER A PARIS in Rectangle Desigen; LV initials Brass Lock Design; and, the LV initials on Criss-Cross Background Design.12 The Louis Vuitton marks are associated with the company’s good will and “have become exclusively associated by the public and the trade with Louis Vuitton.”13

Litigation:

Louis Vuitton continuously investigates the market to ensure that its trademarks are not being infringed. In doing so, the company has innovatively applied trademark law to its brand, pushing the legal envelope to its edge, and sometimes even resulting in legal changes.16

In 1979, Louis Vuitton brought suit against two parties alleging trademark infringement and unfair competition. The defendants were in the business of selling Louis Vuitton knock-off products in the New York area.17 Louis Vuitton sought an ex-parte order to be issued pursuant to Federal Rule of Civil Procedure 65, so that LV would not have to comply with the Federal Rules of Procedure that required notice and service of process.18 The District Court denied the request because ex-parte orders are issued in very rare circumstances. Counsel for Louis Vuitton explained that there was an imperative need to allow LV to not comply with the Federal Rules of Civil Procedure notice requirements because if notice regarding the pending litigation was given to the defendants, “by the time the Court entered an order, most if not all of the merchandise would have been removed from the premises.”19

The Court of Appeals disagreed, and ordered the District Court to grant the ex-parte temporary restraining order, on the condition that the ex-parte order was written very narrowly and to only be in effect for a brief period of time as required to protect the interests of Louis Vuitton in needing the order and the interests of the Defendants to defend themselves.20 The Court of Appeals for the Second Circuit recognized that an ex-parte temporary restraining order is required in situations where: (1) “the failure to issue it would result in ‘immediate and irreparable injury, loss or damage’ and (2) the applicant sufficiently demonstrates the reason that notice ‘should not be required.’”21 Here, the irreparable harm exists in the identical nature of the knock-of goods that are sold at a much cheaper price to the genuine Louis Vuitton merchandise. Further, the Court found that notice should not be required because if the Defendants were given notice, they could easily dispose of the infringing merchandise, which would render the litigation of this matter moot, leaving Louis Vuitton without remedy against the defendants who have wronged the company.22

Louis Vuitton won another counterfeit action in 2002 in the United States District Court for the Eastern District of Pennsylvania. In Louis Vuitton v. Veit, the defendants operated a website that sold counterfeit items bearing multiples Louis Vuitton trademarks.23 The Court found that the items sold on the website bearing the Louis Vuitton marks were in violation of the Lanham Act because use of the marks was likely to cause confusion among consumers. Further, the Court found that defendant’s advertising resulted in a violation of the Lanham Act’s provision prohibiting false designation of origin. Use of the marks in relation to counterfeit goods was likely to cause the public to believe that Louis Vuitton was in some way affiliated or sponsored defendants’ website and use of the marks.24 The defendants continued to operate the website and sell items bearing the Louis Vuitton marks even after being put on notice by the Louis Vuitton company.25 Because the defendants registered and used the domain name , the Court found that the defendants were in violation of the Anti Cybersquatting Act.26 Use of the trademark in the domain name was also found to likely cause dilution of the LV mark.27

Litigation re: Multicolor Bags

Louis Vuitton decided to give its famous mark a makeover in 1997. The company hired fashion designer Marc Jacobs, who then contacted Japanese artists Takashi Murakami to revitalize the LV mark for the millennium.28 The collaboration resulted in four new designs for handbags and accessories: the Monogram Cherry Blossom, featuring the Toile Monogram interspersed with cherry blossoms; the Eye Love Monogram featuring the traditional Toile Monogram interspersed with the Murakami eye symbol; the Monogram Multicolor, portraying the Toile Monogram in thirty-three colors; and a collection of Murakami characters featured with the LV Toile Monogram.29 The Multicolor Monogram portrays the LV Toile Monogram in thirty-three specific vibrant colors hand picked by Murakami and is set against a white or black background.30

In October 2002, Louis Vuitton began printing its trademarked design in vibrant colors against white and black backgrounds.31 The Murakami bags were first shown at the Louis Vuitton fashion show in spring of 2003 in Paris.32 The handbags hit the retail stores in March of 2003.33 The bags were instantly a favorite among celebrities and regular consumers alike.34 Consequently, other retailers decided to market similar bags because Louis Vuitton had so successfully captured the public’s attention. Most notably, Dooney & Burke began manufacturing in late July 2004 and selling the “It- Bag” in October 2003.35 The “It-Bag” portrays the Dooney & Bourke monogram, consisting of interlocking initials DB, in bright colors against white or black backgrounds.36 In April 2004, about nine months after the “It-Bag” entered the market, Louis Vuitton sent Dooney & Burke a cease and desist letter to remove the “It-Bag” from the market. Louis Vuitton initiated litigation three days later.37

The District Court found that the Dooney & Burke “It-Bag” did not infringe the Louis Vuitton mark as portrayed in the Multicolor Monogram. The LV Toile Monogram is a registered trademark in its elements, not in any specific color.38 Therefore, the Monogram itself is the trademarked property of Louis Vuitton regardless of the color that it is printed in.39 The Court decided to treat the Multicolor Monogram as an unregistered mark because consumers associate the Monogram with Louis Vuitton and the Monogram in Multicolor is a source identifier.40 It is important to note that Louis Vuitton did not claim, nor did the Court recognize, an unregistered trade mark in the specific colors chosen by Murakami standing alone. The Court stated that the purpose of trademark law is to avoid consumer confusion, not to provide a monopoly in any good or service by one company.41 Because there was no evidence that consumers identify “the use of multiple bright colors against a black or white background in connection with Louis Vuitton,” the Court felt that it would contravene the purpose of trademark law and hinder competition to grant Louis Vuitton a monopoly over multicolor print against a black or white backgrounds on handbags.42

Further, the Court conducted an analysis according to the Polaroid factors and found that there was no actual confusion, not likelihood of confusion, among consumers between the Louis Vuitton Multicolor Monogram bags and the Dooney & Burke “It-Bags.”43 The Court also found that there was no evidence of dilution by blurring of the LV mark in relation to the “It-Bags.” 44 The Court of Appeals for the Second Circuit upheld the District Court’s holding with regard to the dilution claim; however, the Appellate Court found that the District Court erred in its likelihood of confusion analysis. In conducting this analysis, the District Court focused on a side-by-side simultaneous viewing of the two contested bags. The Appellate Court instead stated that the correct analysis for likelihood of confusion is not to view the bags side by side, but instead to examine them independently in the context that a consumer would encounter the product in the marketplace. Only upon that examination can the court determine if the “it-Bags” are substantially similar to the Louis Vuitton Multicolor Monogram bags, causing consumer confusion in the marketplace.45