THE FASHION LAW EXCLUSIVE - Louis Vuitton has been handed a strong victory in the trademark lawsuit that New York-based LVL XIII Brands and its founder Antonio Brown filed against it in July 2014. In the suit, which centers on the rectangular toe places that appear on both brands' footwear, LVL XIII accused the Paris-based luxury brand of selling footwear that is "confusingly similar" to its own, namely its allegedly "distinctive rectangular metal plate [that adorns] the front of the shoe toe” and "exploiting the goodwill of LVL XIII in an effort to mislead" consumers and in "a deliberate attempt to divert sales away from LVL XIII.”
The shoes at issue: LVL XIII’s sneakers, which include a rectangular toe place design. The brand’s sneakers, which hit the market in August 2013, retail for between $500 and $1200, and according to LVL XIII, they have been popular among the likes of Chris Brown, model Tyson Beckford, rappers Nas and Jim Jones, and a handful of pro athletes. Louis Vuitton’s allegedly infringing design comes in the form of the On the Road sneaker from its Spring/Summer 2014 menswear collection.
As of Tuesday, Judge Paul A. Engelmayer of New York’s Southern District Court dismissed the case in Louis Vuitton’s favor in a rather strongly-worded 107-page decision. In granting Louis Vuitton’s motion for summary judgment – a request for a final decision by a judge that resolves a lawsuit before trial – Engelmayer held that “LVL XIII has not established secondary meaning or a likelihood of confusion; has not shown bad faith or a likelihood of confusion [the latter of which is the key inquiry in trademark infringement matters]; and has not shown material deception or public harm,” thereby failing to establish its claims for trademark infringement, unfair competition, and false designation of origin under the Lanham Act; New York common law unfair competition; and deceptive business practices, under Mew York New York General Business Law. In short: LVL XIII failed to prove its case on all fronts.
In summary, here is what the decision states …
The court found that LVL XIII’s toe plate design “serves a primarily aesthetic function: making LVL XIII’s sneakers appear more enticing” and as a result, it is a “product design feature, which is not inherently distinctive,” as opposed to serving as an inherently distinctive trademark. As a result, in order to succeed on trademark infringement, unfair competition, and false designation of origin claims under the Lanham Act, LVL XIII was required to show that its toe plate design has secondary meaning in the minds of consumers (aka that the toe plate serves to indicate the source of the shoes). The court found that LVL XIII failed to meet its burden here.
Courts routinely to look to a number of factors in determining whether there is secondary meaning, including but not limited to:
1) The extent of paid advertising featuring the design ("It is undisputed that LVL XIII did not engage in any traditional paid advertising.");
2) The amount of unsolicited media coverage of the design (LVL XIII has supplied only minimal evidence of unsolicited media coverage. Of the 25 media placements it has identified, all but four were the result of pitches by its publicist. As such, they were not unsolicited.");
3) Sales success of the design in question ("Of the 1,000 pairs of sneakers LVL XIII manufactured for its first collection, only half sold, generating $141,241 in revenue ... This sales level does not constitute “success” for purposes of establishing secondary meaning.");
4) The length and exclusivity of use of the design by the brand ("The [toe plate] was in use for at most eight months before [Louis Vuitton's On the Road] Sneaker came on the market in March 2014. That duration is far too brief to support secondary meaning ... LVL XIII has not shown that its use of a metal toe plate was at any point exclusive");
5) Attempts by third parties to plagiarize the design ("LVL XIII concedes that, aside from LV’s alleged infringement, it is not aware of any third-party attempts to plagiarize the [toe plate]. And it has submitted no direct evidence that LV copied its design."); and
6) Consumer Studies Linking the Design to a Single Source (LVL XIII did not provide evidence of consumer studies).
In reviewing these factors, Judge Engelmayer found that “not one relevant factor supports a finding of secondary meaning. Rather, each decisively favors [Louis Vuitton]. Given LVL XIII’s minimal advertising expenditures and sales success, the dearth of unsolicited media coverage calling attention to the [toe plate], the absence of attempted plagiarism, and the ubiquity of metal shoe accents in the marketplace, no reasonable juror could find that … consumers had come to perceive the [toe plate] as an indicator of source.”
LIKELIHOOD OF CONFUSION
The court then turned its attention to likelihood of confusion, one of the most central inquiries in a trademark matter. Judge Engelmayer held that “even if LVL XIII had established that the [toe plate] acquired secondary meaning, its Lanham Act claims would still fail because it has not shown a likelihood of confusion.”
For the uninitiated, to establish likelihood of confusion, “a plaintiff must show that 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 the defendant’s mark or that there may be confusion as to [the] plaintiff’s sponsorship or endorsement of the [defendant’s] mark.” In gauging confusion, the court looked to the “Polaroid factors” articulated by Judge Friendly in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).
Those factors are: (1) the strength of the plaintiff’s mark; (2) the degree of similarity between the plaintiff’s and defendant’s marks; (3) the competitive proximity of the products sold under the marks; (4) the likelihood that the plaintiff will bridge the gap; (5) actual confusion; (6) the defendant’s good faith, or lack thereof, in adopting its mark; (7) the quality of the defendant’s product; and (8) the sophistication of the plaintiff’s customers.
In considering each of the aforementioned factors, the court heavily sided with Louis Vuitton. Judge Engelmeyer found that “the overall impressions created by the parties’ toe plates are sufficiently dissimilar;” that the primary creator of Louis Vuitton’s On the Road sneakers “had never heard of LVL XIII or its sneakers before this lawsuit;” and that “there is zero evidence that LV copied the [toe plate] —much less that it did so with the goal of capitalizing on LVL XIII’s reputation,” among other points that suggest that there was no confusion between the parties’ toe plates.
EXPERT WITNESS PRECLUSION
Also worthy of a brief note is the fact that Judge Engelmayer took quite a bit of time to discuss LVL XIII’s proposed expert witness, Charles Colman, who was tasked with determining whether the LVL XIII toe plate had achieved secondary meaning. Judge Engelmayer very firmly sided with Louis Vuitton in finding that Colman Colman "is not qualified to offer the proffered testimony," utilized methodology that is “neither discernable nor reliable” and made “incorrect” assumptions as to LVL IIII’s customer base. The discussion by the court comes on the heels of Louis Vuitton’s motion to preclude Colman’s testimony for these specific reasons.
The court begins its discussion by citing an earlier Second Circuit case, which states: "The Second Circuit instructs district courts to exclude expert testimony if it is ‘speculative or conjectural or based on assumptions that are ‘so unrealistic and contradictory as to suggest bad faith.’” So, you can likely guess where this goes from here.
As to the first point, the decision stated: "Although Colman’s experience and education may qualify him as an expert in certain areas of fashion history and intellectual property law, LVL XIII has not shown how such expertise qualifies him to testify as to the central, and largely empirical, issue addressed in his report: whether the [toe plate] acquired secondary meaning."
In connection with the second point, whether Colman's testimony is the product of reliable principles and methods, the court held: “In forming his opinions, Colman claims to have relied primarily on data he retrieved from social media platforms, as well as press coverage he retrieved through Google. Critically, however, he did not preserve, much less produce, the vast majority of the materials on which he purportedly relied. LVL XIII claims that Colman reviewed ‘over 100,000 unsolicited third-party online posts,’ but Colman—astoundingly—produced copies of only 12 posts.”
Moreover, Englemayer states: "Colman has supplied virtually no insight into the considerations that shaped his qualitative analysis. There is thus no basis on which to hold that his opinions derive from a reliable methodology. The Court is left to assume that they are the product of Colman’s “subjective belief or unsupported speculation. It would be a “dereliction of this Court’s role as a ‘gatekeeper’ to find such  opinion[s] admissible.”
Lastly, as for the “incorrect assumptions” that Colman makes, Engelmayer states: “LV argues that Colman’s assumption that ‘urban males’ are LVL XIII’s primary customer base is incorrect, and makes his resulting opinions irrelevant and unreliable. That critique is persuasive […] Colman offers no factual basis for positing that “urban males” are a material segment of LVL XIII’s customer base. And LVL XIII has adduced no evidence to support that proposition.”
Englemayer continues: "Worse, it is impossible to reconstruct Colman’s searches. He did not: (1) retain a list of the search terms he used, his hit results, or the sites he reviewed but discarded as 'duplicative' or 'not relevant'; or (2) collect his results in a chart or table. Indeed, Colman conceded that without 'go[ing] back into [his] computer,' it would be '[im]possible to replicate the pool [of documents he relied upon] in the exact manner that [he] did the first time.'”
In sum, he states: "The Court holds that Colman’s report and testimony are inadmissible for at least three independent reasons: first, Colman is not qualified to offer the proffered testimony; second, his opinions are unhelpful and unreliable because they do not 'fit' the facts of this case; and third, he did not use a reliable methodology. The Court, therefore, grants LV’s motion to preclude Colman’s report and testimony in its entirety."
All that said, this a strong win for Louis Vuitton to say the least. As for how this will affect its media-perpetuated reputation for being an overly aggressive protector of its intellectual property rights is up for debate.
* The case is LVL XIII Brands, Inc. v. Louis Vuitton Malletier SA et al. (1:14-cv- 04869).