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.
This story first appeared in the August 30, 2004 issue of WWD. Subscribe Today.
“We disagree strongly with the ruling on our preliminary injunction motion. Moreover, we find it puzzling that the court reached this conclusion while at the same time noting the obvious similarities between our distinctive trademark and our competitor’s, and that ‘it could reasonably be inferred that Dooney & Bourke intentionally copied’ our world-renowned trademark and ‘intended to “ride on the coattails” of Louis Vuitton,’” a spokeswoman for LVMH said. She added that LVMH “will immediately appeal” the ruling.
The latest ruling isn’t the first that LVMH has lost. In May, a Manhattan federal district court denied a preliminary injunction request by LVMH against Burlington Coat Factory. That lawsuit sought to bar Burlington from selling a line of beaded handbags featuring an “NY” monogram. LVMH is also appealing the ruling in the Burlington case. The Second Circuit Court of Appeals has issued a stay of the dissolution of the injunction, preventing Burlington from selling the beaded bags until a final decision is rendered on the appeal.
— With contributions from Ross Tucker and Emily Holt