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Image: Target

Hatchimals – the interactive creatures that hatch out of colorful speckled eggs – sent parents in a flurry ahead of the 2016 holiday season. Fifteen years prior, it was Bratz dolls that had Christmas-shoppers scouring shelves. In 1998, there was a rush for the big-eyed, big-eared Furbies, and 1996 saw a marked spike in demand for the fuzzy, red Tickle Me Elmo. This year, a variation of MGA Entertainment’s hot L.O.L. Surprise! Toys is shaping up to be one of the hottest Christmas gifts. Consisting of a “Surprise Slime Kit & Carrying Case,” the toy goes by the name Pooey Puitton.

Covered in multicolored graphics and consisting of a leather-looking handle, the carrying case – complete with its name – is a unmistakable nod to a Louis Vuitton bag. In fact, it is a clear-cut take on the white Multicolore Monogram handbags that Paris-based Louis Vuitton, then under the creative control of Marc Jacobs, put forth in collaboration with Japanese artist Takashi Murakami beginning in 2002.

Shortly after the debut of the “monogram bags, perked up by [colorful] computerized prints of little flowers and cartoon creatures,” as critic Sarah Mower characterized them, for Spring/Summer 2003, the Multicolore Monogram range became the most sought-after accessories of the season, and swiftly rose to requisite “it” bag status.

Paired with the Pooey Puitton name, MGA Entertainment – which rather notoriously swiped the initial designs for its multi-billion dollar Bratz franchise from rival Mattel, according to back-and-forth lawsuits still underway – is clearly producing a play on Louis Vuitton’s famous bags. And its attempts are not lost on consumers. “Lovely LV Murakami print look-a-like,” wrote one commenter on Target’s website. “It’s definitely cute. It reminds me of [the] colorful LV bag that I have,” wrote another. An Amazon reviewer stated, “This is like my LV bag in poo version!!!”

Between the name, the similarity in appearance, and the frequent consumer mentions, the question is: Is this legal or does MGA have another Barbie v. Bratz style lawsuit coming its way?

image: Louis Vuitton

What we know is this: Louis Vuitton maintains both copyright and trademark protections for its Multicolore Monogram pattern. In a copyright context, a jury would be tasked with determining whether the pattern that appears on MGA’s Pooey Puitton case is “substantially similar” to Louis Vuitton’s copyright-protected Multicolore pattern. If the answer is yes, and MGA cannot show that its use of the pattern is subject to some defense, such as fair use, it would be on the hook for copyright infringement.

The trademark infringement inquiry would center on whether consumers are confused about the source of the Pooey Puitton product. In other words, based on the similar pattern and/or name that MGA is using, would they be led to believe that the Pooey Puitton product is in some way connected or affiliated with or endorsed by Louis Vuitton?

Chances are, based on the $50 price tag of the toy (which is about $3,000 less than the average Louis Vuitton bag) and the retailers offering it for sale, stores like Target, Walmart, and ToysRus, (i.e., not any of the wholly-owned and operated brick-and-mortar stores or the singular website on which Louis Vuitton exclusively sells its products), consumers are not likely to think that the Paris-based luxury goods brand is behind this mass-market toy. Also, while Louis Vuitton introduced a line of wooden toys at some point and is currently offering a $3,200 music box on its site, it’s probably very safe to state that Louis Vuitton is not in the toy business.

That is not to say that Louis Vuitton is without potential legal recourse. The brand could cite trademark dilution. An alternate trademark claim, dilution does not require a likelihood of consumer confusion. Instead, what needs to be established is that a third party is using a “famous” trademark in a way that causes the dilution of the “distinctive quality” of that famous mark – either by way of “blurring” – i.e., lessening of its distinctiveness – or by “tarnishing” its reputation.

Given that Louis Vuitton is the most valuable and easily one of the most well-known luxury brands in the world, the fame bar would not be an issue. The brand could also likely make arguments that MGA’s uses of trademarks that look a whole lot like its marks – both in terms of the “Puitton” name and the pattern that appears on the bag – are causing dilution to its brand, whether it be by blurring or by tarnishment.

The real question (I think) is whether MGA has any sort of defense. To be exact, will its use of marks similar to Louis Vuitton’s be legally actionable, or will MGA be able to make a successful case of fair use, and thereby, avoid liability for dilution.

A relatively recent decision in federal court in New York might suggest that MGA has a merited parody claim to make. For instance, in the case that Louis Vuitton filed about My Other Bag, a company in the business of printing drawings of famous “it” bags on canvas bags, along with the words, “My Other Bag … ,” the Second Circuit’s three-judge panel sided with My Other Bag, holding that its inexpensive tote bags amounted to parodies of Louis Vuitton’s “luxury image” and thus, its expensive bags.

Before that, Judge Jesse M. Furman of the Southern District of New York held that My Other Bag’s “use of Louis Vuitton’s marks in service of what is an obvious attempt at humor is not likely to cause confusion or the blurring of the distinctiveness of Louis Vuitton’s marks; if anything, it is likely only to reinforce and enhance the distinctiveness and notoriety of the famous brand.”

As for whether that case means Louis Vuitton is out of luck in the hypothetical case at hand it seems unlikely, as while My Other Bag was making a relatively straightforward play on Louis Vuitton’s expensive coated canvas and leather bags by way of a contrast with its own $30 canvas tote bags, a parody that clearly played on the popular “My Other Car is a Lamborghini” (or some other luxury car name) bumper sticker commonly placed on less pricey or shiny cars, it is not entirely obvious what the parody would be in the case at hand.

In fact, based on no shortage of the comments that consumers are making in connection with the Pooey Puitton toy case – i.e., “This purse is so cute,” “I’m almost tempted to carry it as a handbag,” “The case itself is absolutely adorable,” and “The handbag/carrier case is super cute” – it seems like MGA is more clearly banking on the appeal of a Louis Vuitton bag in order to sell its own products than it is making some larger statement about the Louis Vuitton brand or its bags, which would give rise to need to use Louis Vuitton’s trademarks.

On a final note, MGA filed an application for registration for the “Pooey Puitton” with the U.S. Patent and Trademark Office (“USPTO”) in August for use of the name on “moldable material in the nature of toy putty, used as a toy and amusement device,” plus “carrying and storage cases for moldable material used as a toy and amusement device.”

As of earlier this month, the USPTO issued a preliminary refusal, asserting that while it found “no conflicting marks [in its database of registered and pending marks] that would bar registration,” it stated that MGA’s identification for the types of goods in connection with which it will use the “Pooey Puitton” name is “indefinite and must be clarified [to] specify the nature of the goods.” MGA now has six months to make the necessary changes to its application in order for registration to be considered.

Given the potential for dilution at hand, the money at stake – MGA’s Bratz franchise has a multi-billion-dollar price tag and its L.O.L. Surprise is being positioned as the next big thing, while Louis Vuitton’s luxury goods empire brought in $9.9 billion in revenue last year, and the very clear piggybacking that MGA is doing on the appeal of Louis Vuitton with its new toy – it will be interesting to see whether Louis Vuitton opts to take action on this one via suit or a dilution-based opposition to MGA’s pending trademark application … or both.