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NYC-based LVL XIII Brands, which was founded by 29-year old Antonio Brown last year, has filed suit against LVMH Moet Hennesey Louis Vuitton SA, Louis Vuitton Malletier SA and Louis Vuitton North America Inc. LVL XIII claims in its complaint, which was filed last week in the Southern District of New York, that it is a “luxury lifestyle” brand that specializes in shoes, including sneakers, which retail for between $500 and $1200, and that its designs have been popular among the likes of Chris Brown, model Tyson Beckford, rappers Nas and Jim Jones, and a handful of pro athletes. The brand, which began selling shoes in August 2013, states that it was the first to employ a “distinctive rectangular metal plate [that adorns] the front of the shoe toe” in 2013, and this feature has since become “distinctive in the relevant market.”

LVL XIII alleges that Louis Vuitton is “competing unfairly” with its brand by selling footwear that is “confusingly similar” to its own (such as the Louis Vuitton Spring/Summer 2014 sneaker pictured above). According to LVL’s complaint, the iconic design house is “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 complaint goes on to state that as a result of the growing market for men’s fashion sneakers, “in late February of 2014, Louis Vuitton began advertising its own line of men’s footwear featuring a metal front toe plate on the outsole.” (Suggesting that Louis Vuitton began engaging in the luxury sneaker niche in 2014 is a laughable claim at best, as Louis Vuitton has arguably led the way in this arena for some time now; in fact, the Paris-based design house teamed up with rapper, Kanye West, in 2009 for a collection of sneakers and has continued to produce covetable sneakers since).

LVL XIII bases its claims, which include federal trademark infringement, federal false designation of origin and unfair competition, N.Y. deceptive business practices, and common law unfair competition, on federal trade dress rights and the suggestion that Louis Vuitton is familiar with its designs thanks to an array of media attention the brand has received, such as in Footwear News and on Details’ blog. LVL XIII does, in fact, have a pending trade dress application that extends to the toe plate and that trade dress is likely valid. However, the problem is that the trade dress rights that LVL has and the rights it is claiming in its suit against Louis Vuitton differ quite a bit.

According to LVL XIII’s toe plate trade dress application, which was filed in March 2013, the trade dress at issue is listed as follows: “A shoe toe design featuring a rectangular metal plate across the front of the shoe toe with the wording ‘LVL XIII’ engraved in the metal plate, and four small screws in the corners of the metal plate.” This description, along with the application’s categorization as a “DESIGN PLUS WORDS”, reveals that the LVL XIII name on the toe plate is a significant aspect of its claimed trade dress, as are the screws; having said this, the brand’s rights (which are currently geographically limited, as a federal registration has not been issued) likely do not extend to non-engraved toe plates without screw details, such as the ones that appear on Louis Vuitton’s Spring/Summer 2014 “On the Road” sneakers. (Note: the Louis Vuitton sneakers also have a heel plate, but more about this below). As a result, LVL’s claim that its toe plate and the ones on Louis Vuitton’s sneakers are “essentially identical” is attenuated at best. As a result, there is likely a strong argument that there is no infringement at all here on Louis Vuitton’s part.

If the judge doesn’t buy the “We’re not doing anything wrong” argument, Louis Vuitton is hardly out of luck, as it could probably claim lack of distinctiveness. Put simply, this defense to trade dress infringement holds that the trade dress at issue is neither inherently distinctive nor distinctive by way of secondary meaning (essentially: Do consumers in the marketplace exclusively associate the mark, as used on the identified goods, with a particular source?). In this sense, Louis Vuitton can likely argue that it has also used metal accents on the toes (and heels) of shoes for sometime now. For Fall/Winter 2012, one of Kim Jones’ earliest collections for the Paris-based design house, the designer showed “detail in the collection that made the head spin”, according to Style.com’s Tim Blanks. This extended to the footwear, including astrakhan derby styles with metal accents on the toes and heels. For the house’s F/W 2013 collection, Jones showed several styles of shoes with heel plates bearing the Louis Vuitton “LV” logo. As for womenswear, Louis Vuitton, under the direction of Marc Jacobs, began adorning the toes of boots and other shoes with metal accents, albeit not toe plates, beginning in 2012.

It is worth noting that in light of Louis Vuitton’s S/S 2014 show, menswear sites, such as Hypebeast, noted the “metal plates on the toe and heel, acting as the classic ‘Louis Vuitton’ crest found on many of their accessories.” This sheds light on an argument in Louis Vuitton’s favor: The heel and toe plates are merely an extension of the adornments it has used in the past, such as the Louis Vuitton Inventeur plate that appears on a large handful of styles, and thus, it is not entirely novel to LVL.

Moreover, Louis Vuitton can cite the overall use of metallic plate accents on an array of shoes as of late, many of which predate LVL’s designs and thus, lessen any claims of distinctiveness that LVL may have. Paris-based brand, Giuseppe Zanotti has become well-known for putting silver and gold plates (complete with the brand’s name and small screws) on the straps, heels, toe caps, and other portions of sneakers, which retail at largely the same price point as LVL XIII’s shoes. In fact, the toe plates that LVL XIII is using are nearly identical to the ones Zanotti has been using since at least Fall/Winter 2012 (absent the LVL XIII engraving, obviously). For its Fall/Winter 2013 collection, Givenchy showed metal buckle-adorned styles, which consisted of high-grade silver brushed aluminium metal uppers, not terribly unlike the metal upper on the LVL XIII styles that succeeded Givenchy’s shoes. Essentially, it seems that LVL XIII’s “design” team has merely taken some of the most noteworthy elements from an array of high fashion footwear of seasons past (all of which preceded the debut of the LVL XIII brand), put them on sneakers, and called them their own.

If that’s not enough: Louis Vuitton could likely also claim that there is not a likelihood of confusion between the two brands’ sneakers, as Louis Vuitton’s sneakers include un-engraved toe AND heel plates, where as LVL’s boot-shoe hybrid styles bear LVL XIII-engraved toe plates. Moreover, Louis Vuitton has a very limited list of exclusive stockists, aside from its own brick and mortar stores (namely, shop-in-shops at the most renowned department stores, such as Neiman Marcus and Selfridge’s) and is consistently the subject of a truly extensive amount of media coverage. LVL does not retail in any of the same prized stockists as Louis Vuitton (according to my research), nor does it have the international presence that Louis Vuitton maintains, both in terms of retail and media. As a result, I find it difficult for anyone to confuse the two brands or their shoes.

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LVL XIII sneaker with toe plate (left) & Louis Vuitton’s On the Road sneaker (right)

While it seems obvious to me that there is a noticeable difference between the two brands’ use of toe plates, judging by its complaint, LVL XIII seems convinced Louis Vuitton stole its design (and is benefitting from LVL’s publicity), and as a result, wants the court to order an injunction on its behalf (aka: it wants the court to order Louis Vuitton to permanently cease sales of the allegedly infringing sneaker designs). LVL also wants the court to grant it all of the profits Louis Vuitton gained from the sale of the sneakers at issue, in addition to other damages.

The likelihood of a full victory for LVL XIII, including an award of all of the damages it is seeking, is slim. Not only does LVL XIII simply not have the resources to actually go up against LVMH in court, because few companies do, I’m not entirely sure that LVL has merited claims here. As a result, the parties will most likely settle this case out of court with Louis Vuitton paying up some very modest amount of money to make the lawsuit go away.

(Also worth noting before we move on, in addition to the aforementioned toe plate registration, LVL XIII has a pending trade dress application that extends to a heel plate design. The application for this was filed on April 7, 2014, almost a year after Louis Vuitton’s S/S 2014 menswear show, which featured sneakers with both toe and heel plates, and before any of LVL XIII’s designs featured any toe plates).

Last but not least, if we are going to assume that the metal plate, is in fact, distinctive on its face (as LVL XIII appears to be claiming in its complaint), then I think if any party has a merited lawsuit here, its Giuseppe Zanotti, and not for the toe plates, but for the metal plates that it consistently places on straps on the upper portion of its sneakers that also appear on at least one of LVL XIII’s styles (pictured below). Granted Zanotti would only have common law trade dress grounds, as it has not federally registered the design in terms of trade dress or design patent, it seems as though that is a stronger claim than the ones that LVL XIII is asserting here. Although I will say, LVL (which, I must add, is arguably trying to channel LV with that name) has a smart and reputable lawyer (Ronald Coleman of Goetz Fitzpatrick, LLP), and so, that provides the brand with some hope in what appears to be an otherwise hopeless case.

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Guiseppe Zanotti sneakers (left) & LVL XIII (right)

UPDATE: According to our friends over at World IP Review, LVMH has until Thursday to respond to the lawsuit.