Image: Target

Louis Vuitton has allegedly been trying to shut down 2018’s hottest Christmas toy in a behind the scenes effort, prompting what could ultimately be a high-stakes and resource-intensive lawsuit. On Friday, toy giant MGA Entertainment filed suit against Louis Vuitton in a federal court in Los Angeles, asking the court to declare that its hot-selling Pooey Puitton toy is not running afoul of Louis Vuitton’s intellectual property rights.

According to MGA’s complaint, “On or around December 7, 2018, Louis Vuitton claimed to one of MGA’s customers that the Pooey name and Pooey product infringed upon or diluted one or more of Louis Vuitton trademarks,” including its famous Toile Monogram pattern. Anticipating that a lawsuit from the world’s most valuable luxury goods brand would follow, MGA beat Louis Vuitton to the punch and filed a declaratory judgment action first.

In an attempt to preemptively shut down any potential claims of trademark infringement that Louis Vuitton might lodge against it and/or any of the retailers stocking its popular toy, Los Angeles-based MGA asserts that “no reasonable consumer would mistake the Pooey product for a Louis Vuitton handbag” due to the differences in price, materials, marketing, stockists, and purpose of the two parties’ products. (Note: Likelihood of confusion – or mistake – is the central inquiry in a trademark infringement claim).

In addition to the unlikely case of consumers thinking that the Pooey Puitton product was affiliated with Louis Vuitton, MGA claims that “no reasonable consumer would mistake the Pooey product” – a “poop-shaped [carrying case] made out of hardened plastic,” complete with “multiple storage compartments” and ingredients for making “magical unicorn poop (slime)” – as “being intended to be used as a handbag” or to be used by adults.

The toy company, which is no stranger to litigation after being sued by Barbie-maker Mattel for allegedly stealing the initial designs of its famed Bratz franchise (and thereafter, responding with claims of its own), also highlights the fact that its product is sold in mass-market stores for just less than $60, far less than the average Louis Vuitton bag, and is “marketed to and intended for use by children.”

image: Louis Vuitton

Still yet, MGA argues that it should be shielded form any trademark infringement and dilution liability because its Pooey Puitton product is a “sufficiently obvious and blatant” parody.  In particular, “The Pooey name and product are designed to mock, criticize, and make fun of [the] wealth and celebrity [associated with the Louis Vuitton brand] and be used by a child.”

“The use of the Pooey name and product in association with a product line of ‘magical unicorn poop’ is intended to criticize or comment upon the rich and famous, and the Louis Vuitton name, the LV marks, and on their conspicuous consumption,” MGA states.

And in an attempt to bolster its argument that there is, in fact, an actionable controversy at hand that requires court intervention (i.e., Louis Vuitton is going to sue), which is the basis of a declaratory judgment action, MGA asserts that the luxury brand “has a history of not respecting parody rights in the U.S. and filing vexatious lawsuits against such protected parody,” citing the Haute Diggity Dog case and the more recent My Other Bag case that Louis Vuitton filed and “ultimately lost” in different courts than the one in which the case at hand was filed. It also cites Louis Vuitton’s legal squabbles with Dutch artist Nadia Plesner and the University of Pennsylvania School of Law as further evidence of Louis Vuitton’s penchant for litigation.

As a result, MGA has asked the court to step in and determine that its Pooey Puitton product is not infringing or diluting Louis Vuitton’s trademark rights, a decision that would prevent Louis Vuitton from suing on those grounds. A spokesman for LVMH told Reuters that the brand does not have a comment at this time.

Louis Vuitton will likely respond by seeking a dismissal of MGA’s case, potentially calling into question the strength of its call for declaratory judgment, including the fact that its main allegation, that “Louis Vuitton claimed to one of MGA’s customers that the Pooey name and Pooey product infringed upon or diluted one or more of Louis Vuitton trademarks,” is hearsay (i.e., an out-of-court statement offered to prove the truth of matter asserted), and thus, inadmissible. It is worth noting that nowhere in MGA’s complaint does the toy maker mention receiving any sort of direct threat of litigation from Louis Vuitton, such as a cease and desist letter. However, if MGA is contractually obligated to indemnify – or reimburse/hold harmless – its customers (the parties stocking its Pooey Puitton product), then there is a chance that in lieu of a direct threat from Louis Vuitton to MGA, the alleged claim the brand made to MGA’s unnamed customer is sufficient to give rise to a justiciable controversy.

While Louis Vuitton did not appear to be readying for legal action against MGA (at least not according to MGA’s complaint), it might now, facing suit from MGA, respond with counterclaims of its own. These could include not only trademark infringement and dilution claims (the latter of which bars the use of a famous trademark in a way that would lessen its uniqueness or tarnish its reputation), but also copyright infringement since Louis Vuitton maintains federal copyright registrations for its Toile Monogram pattern.

It will not be surprising if Louis Vuitton also seeks to shut down MGA’s currently pending trademark application for registration for the “Pooey Puitton” trademark.

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