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Image: MGA, Louis Vuitton

THE FASHION LAW EXCLUSIVE — It is one win after another for Louis Vuitton in a decision filed by a California federal judge on Tuesday. In response to a motion to dismiss filed by the U.S. arm of French luxury goods brand Louis Vuitton, Judge John Walter of the U.S. District Court for Central District of California dismissed the case in its entirely, declaring that Pooey Puitton-maker MGA Entertainment “failed to allege sufficient facts to establish that an actual controversy exists between” it and Louis Vuitton, and as a result, the court lacks the jurisdiction necessary to hear the case.

MGA filed a strongly-worded declaratory judgment action against Louis Vuitton in California in December, alleging that because the Paris-based brand had filed a trademark-centric case against it in France over the popular Pooey Puitton product, its North American arm would likely follow suit (and file suit) in the U.S. Pointing to Louis Vuitton’s “history of not respecting parody rights” and of “filing vexatious lawsuits related to its trademarks,” MGA asserted that there was a threat of stateside litigation.

With that in mind, MGA asked a California federal court to preemptively declare that its similarly-named toy – which bears graphics that closely resemble Louis Vuitton’s trademark and copyright-protected Toile monogram print – is not infringing or diluting Louis Vuitton’s domestic trademark rights or its copyrights.

Counsel for Louis Vuitton would swiftly call foul, accusing MGA of “seeking to manufacture an actual controversy between [itself] and Louis Vuitton in the U.S., where there is none,” and on Tuesday, the court agreed.

As Judge Walter stated in his decision, MGA failed to show that an “actual, present, and justiciable controversy has arisen between [the] plaintiff and [the] defendants concerning their respective rights.” To be exact, MGA “failed to plead facts that Louis Vuitton has asserted its U.S. trademark rights” against it, which are – as the judge points out, distinct from Louis Vuitton’s French trademark rights, even if those intellectual property rights “appear visually similar or identical.”

In fact, Judge Walter stated that MGA was not even able to show that Louis Vuitton had asserted its U.S. trademark rights or “ever communicated with MGA about the U.S. marks, claimed infringement or dilution of the U.S. marks, threatened or filed litigation asserting the U.S. marks, or taken any concrete action at all related to the Pooey Product and the Pooey Name in the U.S. and Louis Vuitton’s U.S. marks.”

Even if the parties are engaged in international litigation involving foreign rights, courts have routinely found that that fact, alone, “does not support the finding of an actual [domestic] controversy, and the Court will not find otherwise,” Walter stated.

Touching on additional points raised by Louis Vuitton in its motion to dismiss, the judge declares that MGA’s attempt to create a controversy between the parties by pointing out a number of prior cases that it says demonstrate Louis Vuitton’s “history of not respecting parody rights in the United States and filing vexatious lawsuits” is similarly not persuasive.

“Rather than looking at past behavior concerning other unrelated companies and products to determine whether there is an actual controversy here,” Judge Walters states, “the Court need look only to the fact that Louis Vuitton has not sued MGA based on its trademark rights in the U.S., while it has initiated proceedings in France.”

With the foregoing in mind, the court dismissed the case in its entirety with prejudice, meaning that the dismissal is final, and the parties cannot re-litigate the matter at a later date. The similar but technically unrelated French case is still underway, and still up for debate: what will become of MGA’s pending trademark application for registration for “Pooey Puitton.”

*The case is MGA Entertianment Inc. v. Louis Vuitton Malletier, S.A., 2:18-cv-10758 (C.D.Cal.).