MALLETIER v. DOONEY & BOURKE, INC. No. 04 Civ. 2990(SAS).
561 F.Supp.2d 368 (2008)
Louis Vuitton MALLETIER, Plaintiff, v. DOONEY & BOURKE, INC., Defendant.
United States District Court, S.D. New York.
May 30, 2008.
Steven Kimelman, Esq., Michael A. Grow, Esq., Alison Arden Besunder, Esq., Arent Fox LLP, Theodore C. Max, Esq., Sheppard Mullin Richter & Hampton LLP, New York, NY, for Plaintiff.
Douglas D. Broadwater, Esq., Roger G. Brooks, Esq., Darin P. McAfee, Esq., Cravath, Swaine & Moore LLP, New York, NY, Thomas J. McAndrew, Esq., Thomas J. McAndrew & Associates, Providence, RI, for Defendant.
OPINION AND ORDER
SHIRA A. SCHEINDLIN, District Judge.
This action has pitted two prominent handbag manufacturers against each other and mired them in seemingly endless and often contentious litigation for nearly four years. Plaintiff Louis Vuitton Malletier ("Louis Vuitton") claims that defendant Dooney & Bourke, Inc. ("Dooney & Bourke" or "Dooney") violated federal and state law by introducing and selling handbags bearing designs that infringe upon and dilute Louis Vuitton's trademark rights. Following the conclusion of extensive fact and expert discovery, Dooney & Bourke now seeks to end the case by moving for summary judgment on all of Louis Vuitton's claims. For the reasons that follow, defendant's motion is granted in its entirety.
A. Facts 1
1. The Parties
Louis Vuitton designs, manufactures, imports, and sells fine apparel, handbags, luggage, and fashion accessories.
Dooney & Bourke designs, manufacturers and sells quality handbags and fashion accessories.
2. The Handbag Designs
At its Fall 2003 fashion show held on October 7, 2002, Louis Vuitton introduced handbags bearing a new design.
The price range for handbags and fashion accessories bearing the Monogram Multicolore mark range from less than one hundred and fifty dollars for a simple mirror case to thousands of dollars for certain handbags.
Dooney & Bourke has sold a line of products, including handbags, known as the "Signature Collection" since 2001.
In 2003, D & B introduced its "It Bag" line of handbags, small leather goods, and accessories.
The "It Bag" line does not feature any additional graphics or shapes other than the colored monograms on a white or black background.
Products featuring the colored monogram on a white background began to be sold in retail stores in July 2003, and those with the black background were sold beginning in October 2003.
As of late 2006, more than 1.76 million products from the "It Bag" line have been sold in the United States.
B. Procedural Background
Louis Vuitton filed its complaint on April 19, 2004, alleging trademark infringement under section 32 of the Lanham Act, unfair competition and false designation of origin under section 43(a) of the Lanham Act, and trademark dilution under the Federal Trademark Dilution Act of 1996 (the "FTDA").
By motion dated April 30, 2004, Louis Vuitton moved to preliminarily enjoin Dooney & Bourke from infringing upon and diluting its trademark rights pending the final determination of the instant action. Following a seven-day hearing, the Court denied Louis Vuitton's motion in its entirety. By Opinion and Order dated August 27, 2004 (the "August 27, 2004 Opinion"), I denied injunctive relief on the trademark infringement claim because, despite the validity of the Monogram Multicolore mark, Louis Vuitton failed to demonstrate a likelihood of confusion "among consumers as to the source, authorization, or affiliation of Dooney & Bourke's handbags."
The Second Circuit affirmed in part and vacated and remanded in part. With respect to the trademark infringement claim, it agreed with this Court that the Monogram Multicolore mark is both inherently distinctive and holds secondary meaning.
By Opinion and Order dated April 27, 2007, I held that in order for Louis Vuitton to recover Dooney & Bourke's profits should it prevail on its federal trademark infringement claim, it must prove that Dooney & Bourke's infringing conduct was willfully deceitful.
Following the close of extensive fact and expert discovery, both parties moved in limine to exclude certain expert testimony and reports under Federal Rules of Evidence 403 and 702, and Daubert v. Merrell Dow Pharmaceuticals, Inc.
III. APPLICABLE LAW
A. Summary Judgment
Summary judgment is appropriate "if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law."
In turn, to defeat a motion for summary judgment, the non-moving party must raise a genuine issue of `material fact. To do so, it must do more than show that there is "`some metaphysical doubt as to the material facts,'"
In determining whether a genuine issue of material fact exists, the court must construe the evidence in the light most favorable to the non-moving pftrty and draw all justifiable inferences in that party's favor.
B. Trademark Infringement Under the Lanham Act
Section 32(1) of the Lanham Act governs claims for infringement of a registered trademark, prohibiting the use in commerce of "any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive."
Section 43(a) of the Act
"A claim of trademark infringement, whether brought under [section 32(1) or 43(a) of the Act], is analyzed under the familiar two-prong test .... The test looks first to whether the plaintiffs mark is entitled to protection, and second to whether defendant's use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant's goods."
In order to determine whether a defendant's use of a mark is likely to cause consumer confusion, courts in the Second Circuit typically engage in a weighing analysis using the eight Polaroid factors set out by Judge Henry Friendly, which are: (1) the strength of plaintiff's mark; (2) the similarity of plaintiffs and defendant's marks; (3) the proximity of the products; (4) the likelihood that plaintiff will "bridge the gap;" (5) actual confusion between products; (6) defendant's good or bad faith in adopting the mark; (7) the quality of defendant's product; and (8) the sophistication of the buyers.
"The likelihood-of-confusion inquiry turns on whether `numerous ordinary prudent purchasers are likely to be misled or confused as to the source of the product in question because of the entrance in the marketplace of defendant's mark.'"
"If a factual inference must be drawn to arrive at a particular finding on a Polaroid factor, and if a reasonable trier of fact could reach a different conclusion, the district court may not properly resolve that issue on summary judgment."
C. Trademark Dilution Under the Lanham Act
Under the FTDA, "the owner of a famous trademark [can] seek `an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark.'"
A "plaintiff must show that the senior mark possesses both a significant degree of inherent distinctiveness and ... a high degree of ... acquired distinctiveness."
A plaintiff must next demonstrate the existence of actual dilution, although it need not prove actual loss of sales or profits.
In 2006, Congress enacted the TDRA, which replaced the FTDA in its entirety.
The TDRA also provides the owner of a famous mark with injunctive relief.
D. State Law Claims
1. Trademark Infringement and Unfair Competition
"The elements necessary to prevail on common law causes of action for trademark infringement `mirror the Lanham Act claims.'"
2. Trademark Dilution Under Section 360-1 of the New York General Business Law
Under New York General Business law, a "[l]ikelihood of ... dilution of the distinctive quality of a mark or trade name shall be a ground for injunctive relief... notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services."
As an initial matter, the parties dispute whether the findings of fact and conclusions of law reached by the Court at the preliminary injunction stage are relevant to the resolution of the instant motion. Louis Vuitton contends that Dooney & Bourke's references in its Local Rule 56.1 statement to those findings and conclusions are improper because the standard governing summary judgment is distinguishable from the standard on a motion to preliminarily enjoin activity.
Louis Vuitton is correct that the Court's findings of fact and conclusions of law made on a motion for preliminary injunction are not binding on the Court when deciding'a motion for summary judgment. This is because the "parties are held to different standards of proof in preliminary injunction hearings than in motions for summary judgment and because findings of fact at the preliminary injunction stage are not as fully fleshed out as at the summary judgment stage...."
Although Dooney & Bourke is correct that the Court may consider those findings and conclusions on a summary judgment motion,
A. Trademark Infringement Under the Lanham Act
After nearly four years of litigation, the parties continue to dispute the exact contours of the Monogram Multicolore mark. Specifically, in its Counterstatement of Material Facts pursuant to Local Rule
The first prong of the test for trademark infringement requires that the Monogram Multicolore mark be entitled to protection. The Second Circuit has previously held that the mark is protectable under section 43(a) of the Lanham Act because it is inherently distinctive, and it has acquired secondary meaning.
The outcome of plaintiffs trademark infringement claim thus turns on the likelihood-of-confusion inquiry. I focus primarily on the Polaroid factors for which the parties dispute whether genuine issues of material fact remain.
1. The Second Polaroid Factor: Similarity Between Plaintiffs and Defendant's Marks
In considering similarity, courts must assess whether the "overall impression" created by the marks at issue in relation to the "context in which they are found" is likely to confuse prospective customers.
As I have previously observed, there are obvious similarities between the products bearing the marks at issue. Most notably, both the Louis Vuitton and Dooney & Bourke handbags feature multicolored monograms set against a white or black background. In market as well as social set' tings, consumers would likely view the handbags sequentially or serially rather than simultaneously, from a distance rather than at close-range, and subject to varying lighting conditions. Considering realworld conditions "is merely an application of the general rule that the job of a decision-maker is not to make a personal evaluation of the marks as shown on exhibits side-by-side in a brief or displayed in blown-up reproductions conveniently placed next to each other on easels in a courtroom."
Even when viewed in market and social settings, from afar, and at different times, there are a number of key, discernible dissimilarities that preclude a finding that consumers would consider the marks confusingly similar. First, Louis Vuitton's Monogram Multicolore mark consists of its well-recognized, strong, and inherently distinctive Toile Monogram mark. Dooney & Bourke's "It Bags" prominently feature the "DB" registered trademark. Although the background color may be the same — either white or black — the monograms and their positioning on that background distinguish the products even when viewed "in public from a distance, in a store window, from across a room, from a passing
The "LV" in the Monogram Multicolore mark is significantly larger in font size than Dooney & Bourke's "DB," and plaintiffs mark unmistakably includes three geometric shapes that are evenly interspersed across the design. In fact, the geometric shapes themselves constitute a significant portion of the design. Even when viewed in marketplace conditions, it is plainly discernible that the Monogram Multicolore mark is a combination of letters and shapes. In contrast, the design on Dooney & Bourke's "It Bags" is solely comprised of the "DB" monogram, without any other shapes whatsoever.
Second, the undisputed evidence shows that each monogram or shape that comprises the Louis Vuitton's Monogram Multicolore mark bears a single color. For example, both the "L" and the "V" that comprise a single "LV" monogram on a handbag are the same color. In contrast, the "D" and the "B" comprising a single "DB" monogram on a handbag bear different colors. The impressions created by the handbags' differing presentations of color are distinct as well as distinguishable. The color scheme on the Dooney & Bourke handbags creates a softer, unfocused effect, while the Monogram Multicolore mark presents crisp, bold, individual colors that appear more as a collection of distinct colors.
In light of the key dissimilarities between the marks at issue and the existence of defendant's prominent and registered trademark on the products bearing the allegedly infringing mark, the differences are "likely to be memorable enough to dispel confusion on serial viewing."
2. The Fifth Polaroid Factor: Actual Confusion Between the Products
Louis Vuitton asserts that two genuine issues of material fact on this Polaroid factor remain in dispute: first, "[w]hether consumers have been confused by Dooney's marks, including as to whether products bearing them are Louis Vuitton products;" and second, "[w]hether the decline in Louis Vuitton's U.S. sales of products under its Monogram Multicolore [m]arks, versus the upward trend in the rest of the world where Dooney does not sell products, was the result of Dooney's use of multicolored monogram marks ... that confused and diverted customers ....."
Dooney & Bourke argues that Louis Vuitton has still failed to produce any evidence that even a single consumer was actually confused about source or sponsorship of the "It Bags" during the past four years and instead continues to rely on previously-rejected evidence. It is well-established that Louis Vuitton need not show actual confusion in order to prevail on its claim, but "`[t]here can be no more positive or substantial proof of the likelihood of confusion than proof of actual confusion.'"
The evidence submitted both in support of and in opposition to the instant motion fails to raise a genuine issue of material fact as to actual confusion. The Second Circuit has made clear that "[i]f consumers have been exposed to two allegedly similar trademarks in the marketplace for an adequate period of time and no actual confusion is detected ... that can be a powerful indication that the junior trademark does not cause a meaningful likelihood of confusion."
A very generous reading of the declarations submitted by Louis Vuitton's sales associates and the email evidence reveals, at most, a de minimis number of instances of what might be considered actual consumer confusion. Rather, the vast majority of the evidence on actual confusion submitted by Louis Vuitton solely suggests that Dooney & Bourke's "It Bag" design may "call to mind" the Monogram Multicolore mark, or vice versa. As an example of actual confusion, Louis Vuitton's sales associate asserts that "in or about May 2005, a group of young girls were in the [Louis Vuitton] store ... [o]ne ... carried a multicolor Dooney & Bourke bag and while holding her bag close to the Louis Vuitton multicolor display said ..., `Look, my bag looks almost identical to the Louis Vuitton!'"
Here, Louis Vuitton's evidence actually demonstrates that despite the fact that one source's bag may remind some consumers of the bags of another source, consumers are generally aware that the two multicolored and monogrammed designs come from different, unaffiliated sources which they were able to distinguish and identify by name. The fact that some consumers believed that Louis Vuitton copied Dooney & Bourke's design weighs in defendant's favor because it tends to show that consumers are not misled as to the source, sponsorship, or affiliation of Dooney & Bourke's products with Louis Vuitton. Indeed, they recognize that their products are distinct and originate from independent and unaffiliated sources.
Even the testimony of Louis Vuitton's director of intellectual property suggests that Louis Vuitton's infringement claim is not necessarily premised on a likelihood of confusion between its products and those of defendant, but rather Louis Vuitton's distaste at being associated with the "It Bags."
Because so little of Louis Vuitton's evidence indicates any confusion as to source, sponsorship, or affiliation between the products of plaintiff and defendant, no reasonable juror could find that actual confusion exists. This factor, therefore, weighs in defendant's favor.
3. The Sixth Polaroid Factor: Defendant's Good or Bad Faith in Adopting the Mark
The crux of Dooney & Bourke's argument here is that because this Court has previously found no proof of willful deceit in Dooney's adoption of its mark and because Louis Vuitton has failed to produce any probative evidence since then, this factor continues to weigh in defendant's favor. Louis Vuitton argues that genuine issues of material fact exist with respect to this factor, including, inter aha, "whether [Peter] Dooney preselected the infringing marks and used the `It Team' as a smokescreen to deceive the public," and "whether Dooney created false waiting lists to confuse the public into associating its bags with those sold under the Monogram Multicolore [m]arks ...."
In support of its opposition, Louis Vuitton has also submitted the report of its expert, Dr. Richard A. Holub, on the overlapping use of colors in the marks at issue, and for the limited purpose of proving defendant's intent to copy. Dr. Holub testified that six of the seven colors used by Dooney & Bourke on its black bags and seven of the nine colors used on the white bags are "very similar" to the corresponding colors on Louis Vuitton's bags.
The Second Circuit has suggested that evidence on this Polaroid factor is insufficient when it solely demonstrates that a defendant was aware of a plaintiffs marks before proceeding to use its own modified version.
4. The Seventh Polaroid Factor: The Quality of Defendant's Product
According to Dooney & Bourke, there is no serious dispute that both parties' products are generally considered to be of high quality and regard.
5. The Eighth Polaroid Factor: The Sophistication of the Buyers
Dooney & Bourke contends that consumers who purchase its handbags and those of Louis Vuitton are sophisticated about brand identity. Therefore, according to Dooney & Bourke, this factor weighs in its favor because discerning consumers are less likely to be confused about source, sponsorship, or affiliation. "If the goods are expensive, the reasonably prudent buyer does not buy casually, but only after careful consideration. Thus, confusion is less likely than where the goods are cheap and bought casually."
Louis Vuitton argues that "the significance of this factor depends on the circumstances and the nature of the confusion at issue" because the sophistication of direct purchasers has no effect on post-sale confusion.
It cannot be reasonably disputed that consumers of products offered by both Louis Vuitton and Dooney & Bourke are sophisticated and discerning. Moreover, while Louis Vuitton's handbags are, on average, more costly than those sold by Dooney & Bourke, the evidence shows that there is an overlap among consumers of both brands.
This factor slightly favors Dooney & Bourke. On the one hand, consumers of quality, expensive handbags — made by Louis Vuitton, Dooney & Bourke, and other high-end brands — tend to be sophisticated, hyper fashion-conscious, and are not likely to be easily confused regardless of their youth. On the other hand, Louis Vuitton alleges, inter alia, post-sale confusion and the sophistication of direct purchasers does not necessarily bear on those who might be confused in the post-sale context.
6. Balancing the Polaroid Factors and Other Considerations
For the reasons set forth above, the majority of the Polaroid factors weigh in Dooney & Bourke's favor, leading the Court to conclude that defendant has demonstrated that there is no genuine issue of material fact on the likelihood of confusion among consumers as to the source, affiliation, or sponsorship of the handbags at issue.
B. Trademark Dilution Under the Lanham Act 144
In contrast to trademark infringement, a cause of action for trademark dilution seeks to prevent the "diminution of the strength of the famous mark [ ] even though no confusion as to source, sponsorship, affiliation or connection has occurred."
The Second Circuit has made clear that a "plaintiff cannot prevail on a state or federal dilution claim unless the marks at issue are `very' or `substantially similar.'"
1. Famousness of Mark
Dooney & Bourke contends that Louis Vuitton's Monogram Multicolore mark was not sufficiently famous — i.e., "widely recognized by the general consuming public ... as a designation of source of the goods or services of the mark's owner"
According to Louis Vuitton, this argument creates a genuine issue of material fact with respect to the Monogram Multicolore mark's fame as of July 2003. I disagree. Despite Louis Vuitton's apparent willingness to have this issue resolved by the fact-finder, there is no genuine issue of material fact. Louis Vuitton's own evidence demonstrates the distinctive quality and great degree of recognition enjoyed by the Monogram Multicolore mark, even by July 2003, and even outside of the fashionista world. For example, according to Louis Vuitton North America's Vice President of Marketing and Communications, the company engaged in "widespread advertising, publicity, promotion and sales of products bearing the Monogram Multicolore [m]ark[ ]," and enjoyed a deluge of unsolicited media coverage and attention.
Moreover, notwithstanding Dooney & Bourke's contention that Louis Vuitton's "limited advertising did not have [ ] geographic or demographic reach,"
2. Evidence of Actual Dilution
Louis Vuitton must establish actual dilution in order to recover monetary damages on its dilution claim. However, its anecdotal evidence on actual dilution continues to be insufficient as a matter of law. At most, Louis Vuitton's
The record establishes that a number of consumers mentally associated Louis Vuitton's products bearing the Monogram Multicolore mark with Dooney & Bourke's "It Bags," and vice versa.: However, similar to the Supreme Court's observation in Moseley, "[t]here is a complete absence of evidence of any lessening of the capacity" of the Monogram Multicolore mark "to identify and distinguish the goods or services" offered by Louis Vuitton.
C. State Law Claims
1. Trademark Infringement and Unfair Competition
For the reasons set forth above in Part IV.A, no reasonable juror could conclude that there is a likelihood of confusion between the marks at issue for purposes of the Lanham Act. Accordingly, Louis Vuitton's
2. Trademark Dilution
There is no genuine issue of material fact that Louis Vuitton's Monogram Multicolore mark is distinctive. Under the six-factor framework for assessing likelihood of dilution by blurring under New York law, no reasonable jury could conclude that Louis Vuitton's Monogram Multicolore mark has been diluted. First, for the reasons stated above, the marks are not similar even when viewed in market conditions and considering similarity from an initial interest or post-sale perspective.
Second, as set forth earlier, Louis Vuitton and Dooney & Bourke overlap in their consumer bases, and there is no evidence demonstrating any lack of sophistication of the consumers that comprise those bases. Instead, the evidence shows that these consumers are discerning and knowledgeable with respect to the handbag market.
Third, there is some evidence that might suggest that. Dooney & Bourke "adopted its mark hoping to benefit commercially from association with the senior mark."
Fourth, while the similarity of the products covered — i.e., handbags and accessories — and the renown of the senior mark favor Louis Vuitton, the Court must balance all of the factors.
For the reasons set forth above, defendant's motion for summary judgment is granted in its entirety. The Clerk of the Court is directed to close the motion [document no. 269] and this case.
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