Dooney & Bourke Wins Ruling In Bag Battle With Louis Vuitton

A Manhattan federal judge has ruled in favor of Dooney & Bourke in a four-year trademark battle with Louis Vuitton.

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A Manhattan federal judge has ruled in favor of Dooney & Bourke in a four-year trademark battle with Louis Vuitton.

This story first appeared in the June 4, 2008 issue of WWD.  Subscribe Today.

U.S. District Court Judge Shira Scheindlin said Dooney & Bourke’s “It Bag” monogram design did not infringe on Vuitton’s Monograme Multicolore handbag collection.

“[Louis Vuitton] offered no proof that the similarities in the marks is likely to confuse ordinary consumers, whether it is at the point of initial interest, point-of-sale, or post-sale,” Scheindlin wrote in a decision issued Friday.

Although she acknowledged the similarities between the two designs, Scheindlin noted Vuitton’s LV mark used a larger font size and consisted of “a combination of letters and shapes,” while the Dooney & Bourke design featured an unadorned DB.

“Even the testimony of Louis Vuitton’s director of intellectual property suggests Louis Vuitton’s infringement claim is not necessarily premised on a likelihood of confusion between its products and those of [the] defendant, but rather Louis Vuitton’s distaste at being associated with the ‘It Bags,'” the judge wrote.

Noting the history of the case, Scheindlin wrote, “This action has pitted two prominent handbag manufacturers against each other and mired them in seemingly endless and often contentious litigation.”

Vuitton said it would appeal the ruling.

“Louis Vuitton respectfully disagrees with the judge’s decision on the motion,” said a spokeswoman. “There are numerous material issues of fact in this case that warrant consideration by a jury.”

Trademark cases have become common in the industry as companies vie to protect their brands and refined manufacturing processes and international trade makes quick-turn mass production easier. Such cases are often settled out of court.

In its April 2004 complaint, the division of LVMH Moët Hennessy Louis Vuitton alleged that Dooney & Bourke’s “It Bag” line featuring a DB monogram infringed on its Monogram Multicolore handbag collection, which has a colorful LV monogram and was a collaboration with artist Takashi Murakami. Much of the judge’s 54-page opinion dealt with whether the monograms could be mistaken for each other.

“The consumers weren’t confused and the court wasn’t confused and the experts weren’t confused,” said Thomas McAndrew, an attorney for Dooney & Bourke.

Vuitton won an early battle in the case in 2006, when an appeals court reversed a ruling by Scheindlin that denied Vuitton a preliminary injunction and sent the case back to the judge.

Vuitton introduced bags featuring its LV design in the “Murakami colors” in October 2002. The bags were a hit. By late 2006, sales reached almost $145 million, court papers said. Prices range from less than $150 for a mirror case and reach into the thousands.

In 2003, Dooney & Bourke introduced the “It Bag,” which also featured a colorful monogram logo. The bag retailed for less than $50 up to the hundreds. By late 2006, the line had generated sales of more than $100 million.

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