Louis Vuitton’s designs are mostly based on patterns which have become internationally associated with the brand: Monogram, Damier Azur, Damier Ebene, and the black and grey Damie. Since Louis Vuitton’s brand builds on recognisability and association of the patterns with the brand and its associated status, quality, tradition, and customer service, Louis Vuitton has a strong interest in restricting the use of the patterns. Here is an overview of interesting cases which Louis Vuitton fought out in court and what we can learn from them about brand protection:
Where Louis Vuitton Almost Could Not (And May Never) Get Brand Protection: Louis Vuitton Malletier v EUIPO
Although Louis Vuitton’s Damier Azur design is well-known around the world and associated by many with the luxury brand, it is ultimately still just a chequerboard pattern which is rather common. This became an issue for Louis Vuitton Malletier (“Louis Vuitton”) in the European Union. Louis Vuitton had registered a trade mark for its Damier Azur design with the European Union Intellectual Property Office (EUIPO) to protect the Damier Azur design in the EU.
This was challenged by Wisniewski, a Polish national, through an application for invalidity to the (EUIPO) on the basis of the pattern lacking distinctiveness and his challenge was successful at the Cancellation Division. Although a chequerboard pattern is rather common, it is still possible for a brand to protect it, but it has to pass a high threshold to be able to protect a common pattern.
The decision was certainly far from Louis Vuitton’s desired outcome and so the brand tried to get the decision annulled, but the request was dismissed by the Board of Appeal (BoA) (Case R 274/2017-2). Louis Vuitton therefore tried to get the BoA’s decision overturned from the General Court (Case T-105/19) and its trade mark restored with two arguments:
It was wrongly assumed that the chequerboard being a common design is a ‘well-known fact.’ The BoA’s dismissal of Louis Vuitton’s request for annulment of the 2016 decision was based on the assumption that the fact that the chequerboard pattern is a common design is a well-known fact. Louis Vuitton argued that the plaintiff would have had to produce evidence to prove this assumption made by the BoA since it was the plaintiff’s burden to show the invalidity of an EU trade mark which enjoys a presumption of validity. This argument was, however, dismissed by the General Court – such well-known facts may be taken into consideration, even if they strengthen the plaintiff’s argument and not the presumed validity of the EU trade mark.
The BoA decided without considering all the relevant facts that the Damier Azur design had not acquired distinctiveness. Even if a design is common and it is a well-known fact that it is, a brand can still protect it. However, the brand then needs to show that the design has acquired distinctiveness. Anees et al summarised the General Court’s factors regarding acquiring distinctiveness for a common design (CMS Law-Now, 26/06/2020):
“trade marks which are accepted on the basis of acquired distinctiveness through use would, initially, have been inherently invalid;
the burden to prove acquired distinctiveness through use is on the trade mark proprietor;
the use made of the mark must have originated from a particular undertaking;
a variety of factors determining use of the mark must be taken into account (e.g. market share held by the mark; intensity and geography of use, etc.);
distinctive character may be achieved by use of the mark in conjunction with another registered trade mark; and
the mark must have distinctive character throughout the European Union.”
The BoA had been selective in the evidence it regarded for the acquisition of the distinctiveness and excluded evidence from consideration which would have been relevant for all member states. The General Court therefore annulled the decision of the BoA due to improper assessment of the evidence.
For now, Louis Vuitton has its Damier Azur trade mark back. But it is to be noted that the General Court merely said that the BoA wrongly assessed the evidence, not that Louis Vuitton’s alleged acquired distinctiveness of the design was actually proven. It therefore remains to be seen whether Louis Vuitton can actually trade mark the Damier Azur design in the EU in the future.
What does this case tell us about brand protection?
First and foremost, it can take time for a brand to protect its designs – even if they already have a registered trade mark. Trade marks are not beyond challenge and such challenges can, like any legal dispute, lead to lengthy legal fights before the courts. Wisniewski challenged Louis Vuitton’s trade mark in 2015 – the brand saw a judgement in its favour five years later and even now the trade mark is not beyond challenge as the decision in Louis Vuitton’s favour from the General Court did not determine that the evidence Louis Vuitton presented for the acquired distinctiveness of the pattern should have been considered by the BoA, but not whether it would have been sufficient for proving acquired distinctiveness.
It also points out how difficult it can be to determine whether something is individual enough: Louis Vuitton’s patterns have all become widely associated with the brand, the Damier Azur design is ultimately still just a chequerboard design. Whether it is enough that such a common design has been used by Louis Vuitton for a long time and become widely associated with its brand remains to be seen.
Copyright meets Fair Use & Freedom of Speech
Louis Vuitton is no stranger to counterfeit products. Anyone who went on vacation at touristic beaches has probably met a street vendor selling Louis-Vuitton-look-alike bags for about thirty bucks. The company has a history of taking legal action against those distributing counterfeits of their products (as for example here), but not everything that uses Louis Vuitton’s copyrighted designs is necessarily a counterfeit or a violation of copyright upon which the company can sue due to the fair use defence which exists in variants in many jurisdictions, which Louis Vuitton learned the hard way in a few lost court cases. (See also: trade mark dilution for similar issues – this was also raised in some of the cases mentioned here but this post focuses on copyright/intellectual property rights)
‘Simple Living:’ Right to Freedom of Expression Trumps Property Rights. What is interesting about this case is that it is actually two cases: Louis Vuitton sued the same artist in Denmark twice. Early on, it looked like Louis Vuitton was going to win the case. Plesner, the artist in question had created the drawing “Simple Living,” depicting “a starved and platter-eyed young African boy, holding a chihuahua and the Audra bag, à la Paris Hilton” (Hyperallergic, 25/03/2011). Plesner printed the design on shirts meant to draw attention to the situation in Darfur.
Plesner used the LV multi-colour repeat monogram pattern with slight alterations (but making the bag look very clearly like a Louis Vuitton multi-colour monogram bag). Louis Vuitton argued that Plesner should stop the use of their design, protected by intellectual property rights, for selling her T-shirts as associating the brand with the situation in Darfur may harm the brand’s reputation and Plesner could easily accomplish her objective without associating Louis Vuitton with it. Since Plesner did not respond to Louis Vuitton’s initial request to cease the use of their intellectual property, Louis Vuitton began asking for damages, asking for 5,000 Euros per day that she continued selling the T-shirts with the design (LA Racked, 13/05/2008). The parties ultimately agreed that Plesner would stop selling the T-shirts and the claims for damages were withdrawn.
But fast forward a few years and Plesner’s “Simple Living” design is back: this time in a painting titled Darfurnica which is being exhibited in Copenhagen in 2011. Louis Vuitton adopted the same strategy: Asking for damages to make the artist stop. But this time, Plesner challenged Louis Vuitton’s request for damages and won. Her case relied on the European Convention of Human Rights, guaranteeing her freedom of speech (art. 10). A judge ruled that Louis Vuittons’ right to peaceful enjoyment of property (art. 1 of the First Protocol) was outweighed by Plesner’s interest to express her opinion through her art in the form of “Simple Living.” Louis Vuitton did not appeal the finding.
Louis Vuitton’s legal battle with Plesner was neither the brand’s first nor would it be its last lawsuit where intellectual property rights meet freedom of expression and lose to the latter:
Dog Toys that look like Louis Vuitton Bags. The product in question was literally called “Chewy Vuitton” and the lawsuit filed by Louis Vuitton in the US alleged that the dog toy, looking like a mini Louis Vuitton bag, infringed upon their trade marks. The court sided with the defendant, Haute Diggity Dog in its 2007 judgement: Chewy Vuitton is a successful parody which was also not likely to confuse consumers – while looking like a Louis Vuitton handbag in terms of design, the price point, points of sale (e.g. pet shops), as well as the purpose (a dog toy – dog toys are not manufactured by Louis Vuitton) make it clear that the product is not a Louis Vuitton product and consumer confusion is therefore unlikely.
Parody Bags. But even where the product in question was a bag and not a dog toy, the parody defence (a specimen of the fair use defence to copyright violations) held up in the US. In 2014, Louis Vuitton sued My Other Bag for making a tote bag stating “My Other Bag…” on one side and then a print of a Louis Vuitton-lookalike drawing on the other side of the bag. While there is the drawing of the lookalike, the tote as a whole will hardly be mistaken for a real Louis Vuitton bag. My Other Bag succeeded in arguing that the bag was parody: the whole point of the bag was to say that the bag itself is not a Louis Vuitton bag by playing on the joke of “my other [insert item like a car, bag, etc]…”
Big Plastic Poo and Slime. Did that description of the facts of the case get your attention? The product of which it was alleged that it infringed copyright was literally a plastic bag shaped like poo, containing slime and other children’s items for fun. If you fancy getting such a “Pooey Puitton toy purse” yourself, you can get one off Amazon for around fifty to sixty bucks (unpaid ad – merely included here to demonstrate the price point and availability of the product). This case actually went nowhere, but it may show that Louis Vuitton learned from its earlier losses.
Interestingly enough, it was not Louis Vuitton which filed a lawsuit in this case. Instead, MGA Entertainment (the creator of the toy purse) filed a lawsuit against Louis Vuitton. MGA Entertainment anticipated that Louis Vuitton may attempt to sue them for the use of their monogram design and alleged before the court that Louis Vuitton has a history of using trade mark lawsuits to not respect parody rights. It further accused Louis Vuitton of trying to interfere with its sales of the Pooey Puitton toy. Louis Vuitton’s reply to the accusations can be reduced to this: ‘We are not trying to impede your sales.’ And that was also the end of the story – the judge ruled that MGA Entertainment cannot show any actual controversy between the parties and over it was.
But the very fact that Louis Vuitton did not sue for a trade mark violation and stated that they are not trying to impede sales (despite parts of their design being used), shows that the brand may have learned from its previous mistakes regarding parody. But this does not mean that Louis Vuitton will stop testing the limits of the protection of parody in different jurisdictions. The Pooey Puitton case was just a case which would not have allowed them to do so since the parody arguments in favour of MGA Entertainment were very strong. Bains summarises the strong case MGA Entertainment would have had in case of a trade mark lawsuit from Louis Vuitton like this (Fashion Magazine, 02/01/2019):
“It [Pooey Puitton] establishes itself as a version of the original through a rhyming name and design elements that closely resemble the iconic LV monogram, while at the same time achieving a satirical tone (again: poop emoji! Unicorn slime!). MGA is also clearly marketing the product as a DIY slime kit for kids (not a high-end handbag) and notes in its legal complaint that, “The use of the Pooey name and Pooey product in association with a product line of ‘magical unicorn poop’ is intended to criticise or comment upon the rich and famous, the Louis Vuitton name, the LV marks, and on their conspicuous consumption.”
Basically, their satire game seems strong.”
What to Protect: A Design as a Whole and Its Pieces
In order to protect its monogram design, Louis Vuitton has registered not just one trade mark, but instead registered a trade mark over the whole design but also over several of the individual elements such as the overlapping LV and the individual flowers. Louis Vuitton’s lawsuit against i-Fe Apparel illustrates that this can mean that Louis Vuitton can sue for multiple trade mark violations (and therefore seek damages for multiple violations instead of just one, see Knobbe Martens, 16/01/2019 and The Fashion Law, 12/11/2018). Furthermore, this strengthens Louis Vuitton’s case against those who copy only parts of the design such as the flowers but leave out other parts (like the LV design). This highlights how a brand may protect its designs more effectively through registering its designs as a whole as a trade mark alongside individual elements of the design.
Cases
Case R-274/2017-2 Louis Vuitton Malletier v EUIPO, EU:T:2020:258
Case T-105/19 Louis Vuitton Malletier v EUIPO, EU:T:2020:258
Unofficial Translation of the 2011 Plesner Judgement (Danish Court Case): http://www.mediareport.nl/wp-content/uploads/2011/05/english-translation-plesner-vs-louis-vuitton-judgement-4-may-2011.pdf
Louis Vuitton Malletier, S.A. v. i-Fe Apparel, et. al., 1:18-cv-10352 (SDNY).
Louis Vuitton Malletier S.A. v. Haute Diggity Dog, 507 F.3d 252 (4th Cir. 2007).
Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 18-293-cv (2d Cir. Mar. 15, 2019)
Articles
Anees, Fareed. “CJEU Annuls EUIPO's Trade Mark Invalidation of Louis Vuitton's Damier Azur Pattern.” CMS Law-Now, 26 June 2020, www.cms-lawnow.com/ealerts/2020/06/cjeu-annuls-euipos-trade-mark-invalidation-of-louis-vuittons-damier-azur-pattern?cc_lang=en.
“Louis Vuitton Sues.” British Vogue, British Vogue, 14 Aug. 2003, www.vogue.co.uk/article/louis-vuitton-sues.
Bains, Pahull. “A Fashion Lawyer Weighs In On the Louis Vuitton vs Pooey Puitton Lawsuit.” Fashion Magazine, 2 Jan. 2019, fashionmagazine.com/style/louis-vuitton-pooey-puitton-lawsuit/.
Weaver, Cat. “Blurring Luxury and Art: Nadia Plesner vs Louis Vuitton.” Hyperallergic, 25 Mar. 2011, hyperallergic.com/21392/nadia-plesner-vs-louis-vuitton/.
Tasha. “The Other Side: Louis Vuitton vs. Nadia Plesner.” Racked LA, Racked LA, 14 May 2008, la.racked.com/2008/5/13/7844083/the-other-side-louis-vuitton-v.
van der Zaal, Reindert. “Legal Review Plesner vs. Louis Vuitton Judgment: Artistic Freedom Prevails Over IP-Rights.” Media Report : Legal Review Plesner vs. Louis Vuitton Judgment: Artistic Freedom Prevails Over IP-Rights, 5 May 2011, www.mediareport.nl/en/press-law/05052011/legal-review-plesner-vs-louis-vuitton-judgment-important-victory-for-the-artistic-freedom/.
Ellis, Victoria E., and Peter Law. “Divide and Conquer: How Louis Vuitton's Brand Protection Strategy Might Increase the Opportunities for Brand Owners to Combat Infringement.” Divide and Conquer: How Louis Vuitton's Brand Protection Strategy Might Increase the Opportunities for Brand Owners to Combat Infringement | Knobbe Martens, 16 Jan. 2019, www.knobbe.com/news/2019/01/divide-and-conquer-how-louis-vuittons-brand-protection-strategy-might-increase.
“A New Louis Vuitton Lawsuit Shows Its Strategic Approach to Brand Protection.” The Fashion Law, 12 Nov. 2018, www.thefashionlaw.com/a-new-louis-vuitton-lawsuit-shows-its-strategic-approach-to-brand-protection/.
Further Interesting Reads on the Topic
McCutcheon, Jani, Designs, Parody and Artistic Expression — A Comparative Perspective of Plesner v Louis Vuitton (2015). (2015) 41(1) Monash University Law Review, UWA Faculty of Law Research Paper No. 2015-15, Available at SSRN: https://ssrn.com/abstract=2655393 or http://dx.doi.org/10.2139/ssrn.2655393
“Louis Vuitton Chequerboard Pattern Wins before European Court.” Legal Patent, 15 June 2020, legal-patent.com/trademark-law/louis-vuitton-chequerboard-pattern-wins-european-court/.
Melilli, Vincenzo. “LOUIS VUITTON'S CHEQUERBOARD PATTERN HELD TO BE INVALID.” Bugnion, 9 Aug. 2019, www.bugnion.eu/en/louis-vuittons-chequerboard-pattern-held-to-be-invalid/.
Sitzmann, Tim. “Louis Vuitton's Other Lawsuit Was a Winner, but Loses to a Parody Defense - Again.” DuetsBlog ®, 13 Jan. 2016, www.duetsblog.com/2016/01/articles/dilution/louis-vuittons-other-lawsuit-was-a-winner-but-loses-to-a-parody-defense-again/.
Kaplan-Peterson, Brittany L. “Second Circuit Affirms Dismissal of Louis Vuitton Infringement Claims in Parody Tote Bag Lawsuit.” Cowan, DeBaets, Abrahams & Sheppard LLP, 3 Jan. 2017, cdas.com/dismissal-louis-vuitton-infringement-claims/.
“The Fate of Louis Vuitton's Damier Prints to Be Decided by the European Union's Highest Court.” The Fashion Law, 22 Jan. 2020, www.thefashionlaw.com/the-fate-of-louis-vuittons-damier-to-be-decided-by-the-european-unions-highest-court/.
Reuters. “US Judge Drops 'Pooey Puitton' Lawsuit Against Louis Vuitton.” The Business of Fashion, The Business of Fashion, 15 May 2019, www.businessoffashion.com/articles/news-analysis/u-s-judge-dumps-pooey-puitton-lawsuit-against-louis-vuitton.
“Cases of Interest: Louis Vuitton Malletier v. Haute Diggity Dog.” The Fashion Law, 14 Mar. 2020, www.thefashionlaw.com/learn/cases-of-interest-louis-vuitton-malletier-v-haute-diggity-dog/.
Reynolds, Amy. “Wave the Chequered Flag – Louis Vuitton given Partial Green Light in Trade Mark Appeal.” Fieldfisher, Fieldfisher, 30 June 2020, www.fieldfisher.com/en/services/intellectual-property/intellectual-property-blog/wave-the-chequered-flag---louis-vuitton-given-partial-green-light-in-trade-mark-appeal.
Eytan, Declan. “Louis Vuitton Loses Lawsuit (Again) Filed Over Allegations of Trademark Infringement.” Forbes, Forbes Magazine, 31 Dec. 2016, www.forbes.com/sites/declaneytan/2016/12/31/louis-vuitton-loses-lawsuit-again-filed-over-allegations-of-trademark-infringement/?sh=2fb692c620e1.