NEW YORK — Score one for Dooney & Bourke, at least for now.
Emulating certain design features doesn’t constitute trademark infringement when it involves different trademarks or logos, according to a Manhattan federal district court judge who issued a ruling denying a request for a preliminary injunction by LVMH Moët Hennessy Louis Vuitton against Dooney & Bourke.
The controversy centered on LVMH’s famed Murakami designs, featuring the LVMH Toile monogram trademarks on multicolored patterns and styles for handbags and accessories.
The ruling affects only LVMH’s request for a preliminary injunction and has no effect on the lawsuit filed by LVMH, which still has to be tried on its merits.
“This ruling is upsetting. I spent considerable time with Takashi Murakami creating the Monogram Multicolore for Louis Vuitton. To allow someone to simply copy and profit from our creativity is frustrating and can discourage this kind of innovation in others,” said Marc Jacobs, artistic director for Louis Vuitton.
In the Dooney lawsuit, LVMH charged that the company had “knocked off” its Murakami designs using similarly colored overlapping monogram initials on both white and black backgrounds. But Dooney also used its own trademarked initials.
Judge Shira Scheindlin wrote in her decision, “This emulation of the certain features of the Louis Vuitton bags, however, does not reflect Dooney & Bourke’s intention to deceive customers into concluding that the product derives from Louis Vuitton.”
The judge went on to note, “Louis Vuitton created a new look and now seeks to preclude others from following its lead. If Louis Vuitton succeeds, then it will have used the law to achieve an unwarranted anticompetitive result.”
She pointedly noted that LVMH had been unable to present “any evidence” that the Dooney bag created confusion among consumers. She also reasoned that granting LVMH a monopoly over all multicolored repeating monograms set against a black or white background would contravene one of the objectives of trademark law, which is “not to harm competition.”
“We always felt that the claims by Vuitton lacked merit. The bags are not the same. None of the elements on the LVMH bags are on the Dooney & Bourke bags,” said Thomas J. McAndrew, attorney for Dooney.
Issa Rae stopped by WWD's NYC headquarters to talk about season two of "Insecure," which premieres this Sunday on HBO. Click link in bio for all the details. #wwdeye (📷: @jgreenery; Styled by @mayteallende)
A Stella McCartney sketch of a custom dress made from protein-based silk in partnership with biotech lab Bolt Threads. The dress will be displayed at The Museum of Modern Art's upcoming design exhibition, "Items: Is Fashion Modern?"