They were not comment, criticism or parody "upon the famous mark owner or the goods or services of the famous mark owner." ¶ 16.) Can you be more specific with your question? Unauthorized websites advertised purported Louis Vuitton bags, including in Florida. ¶ 43.). Several deponents who worked on the "Luxury" ad testified that Hyundai and its outside advertising firms specifically intended to create an association with Louis Vuitton. So why not use the Louis Vuitton marks themselves? Even with Louis Vuitton's cease-and-desist letter in hand, Hyundai proceeded to run the ad through the NBA Ail–Star Weekend and, following commencement of this action, the Academy Awards. Certain other Twitter posts mentioned both brands, but did so in the context of remarking on this litigation, thereby reflecting an express awareness that Louis Vuitton had not sponsored or affiliated with the ad. iPod touch Requires iOS 11.0 or later. Tiffany held that the online auction site eBay could not be liable for trademark dilution when it displayed the famous Tiffany mark "to advertise and identify the availability of authentic Tiffany merchandise on the eBay website." Combining an engraved LV Malletier buckle with Epi leather or a choice of the Maison's most iconic canvases, … LV Link. 56.1 ¶ 30; Pl. She testified that the design "came out of somebody's imagination, so there was nobody to go seek permission from."(Def. (Kruse Dec. Ex. (Pl. In the cease-and-desist letter that it would send to Hyundai after the ad's initial broadcast, Louis Vuitton described the marks as having "three distinctive elemental designs—a pinwheel design, a diamond with an inset pinwheel design, and a circle with an inset flower design ...." (Shapiro Dec. Ex. Louis Vuitton also has submitted some evidence from social networking users that reflect interest and enthusiasm about a Louis Vuitton basketball. Moreover, Hyundai makes no citations to the record in support of this prong, but asserts, ipse dixit, that there is no confusion about the source of the Louis Vuitton marks in the "Luxury" ad. Louis Vuitton has asserted trademark and unfair competition claims under New York and federal law, alleging that the commercial diluted and infringed its marks. (Kruse Dec. Ex. Rule 56(a). In this case, the relevant universe would consist of prospective Hyundai Sonata purchasers, and the relevant underlying issue is whether that population erroneously believed that Louis Vuitton sponsored, affiliated or associated with Hyundai. Louis Vuitton sued Managed Solutions Group, Inc. (MSG), Akanoc Solutions, Inc., and Steven Chen (collectively, Defendants) for contributory copyright and trademark infringement, contending that Defendants were liable for their role in hosting websites that directly infringed Louis Vuitton… 22 at 1.) Q. Mem. Rule 56(c)(3). Q. The motion will be heard on July 6, 2009 at 3:00 p.m. in Courtroom 8, Fourth Floor of the U.S. In the absence of any disputed material fact, summary judgment is appropriate. 56.1 ¶ 11; Def. (Kruse Dec. Ex. It states: Likelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name shall be a ground for injunctive relief in cases of infringement of a mark registered or not registered or in cases of unfair competition, notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services. Q. The parties dispute the relevance and methodologies of one another's consumer surveys. Mem. Louis Vuitton moves for summary judgment on its trademark dilution claims as to liability only, and Hyundai has moved for summary judgment in its favor on all claims. 56.1 Resp. ¶¶ 32, 38, 62.) You can access the new platform at https://opencasebook.org. With no opposing evidence submitted by Hyundai other than that which it submitted on the federal blurring claim (as to which summary judgment is granted in plaintiff's favor) this Court concludes that factors first, fourth and fifth weigh in Louis Vuitton's favor. To a large extent, both parties' submissions have failed to focus on the key issue plaintiff's trademark infringement claims: Whether prospective purchasers of Hyundai Sonatas incorrectly perceived Louis Vuitton to have sponsored, associated or affiliated with Hyundai based on the "Luxury" ad. C at 9.) at 8.) They are: (1) the strength of the mark; (2) the similarity of the parties' marks; (3) the proximity of the parties' products in the marketplace; (4) the likelihood that the plaintiff will "bridge the gap" between the products; (5) evidence of actual consumer confusion; (6) whether the defendant acted with bad faith in adopting the mark; (7) the defendant's product quality; and (8) consumer sophistication. 34.) Hormel Foods,73 F.3d at 504 (quotation marks omitted). Id. Boone, an account executive at the advertising firm that oversaw the "Luxury" ad, also testified that the ad contained no comment directed toward Louis Vuitton or its marks: Q. LV City Game. 56.1 Resp. The intent wasn't to say anything about Louis Vuitton, was it? LOUIS VUITTON Official International Website - Explore the World of Louis Vuitton, read our latest News, discover our Women and Men Collections and locate our Stores None of the respondents said that it made them think less favorably of Louis Vuitton. Relying on Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d at 112, Hyundai argues that it cannot be liable under the TDRA because it did not use the Louis Vuitton marks to designate its own products—presumably, for instance, a hypothetical product such as the Louis Vuitton Sonata, or the actual sale of Louis Vuitton-style basketballs. ¶ 18.) § 1125(c)(3)(A)(ii). ¶ 14; Kruse Dec. Ex. ¶¶ 23, 29.) According to Hyundai's expert, a net eight percent of likely Hyundai Sonata consumers either believed that Hyundai and Louis Vuitton were affiliated in the "Luxury" ad, or that Louis Vuitton granted permission to use its marks. Q. R & S.) Hyundai does not challenge this evidence. at 14.) 56.1 Resp. Summary judgment "shall" be granted "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." C at 22–23. (Def. Nabisco, Inc. v. Warner Lambert Co., 220 F.3d 43, 46 (2d Cir.2000). They are: (i) the degree of similarity between defendant's mark and the famous mark; (ii) the distinctiveness of the famous mark; (iii) whether the famous mark's owner "is engaging in substantially exclusive use of the mark;" (iv) the degree of recognition of the famous mark; (v) whether the defendant intended to create an association with the famous mark; and (vi) actual association between the defendant's mark and the famous mark. In raising a triable issue of fact, the non-movant carries only "a limited burden of production," but nevertheless "must 'demonstrate more than some metaphysical doubt as to the material facts,' and come forward with 'specific facts showing that there is a genuine issue for trial.' For the reasons discussed, the Hyundai survey, while probative on association, contains flaws that are better assessed by a jury on the issue of actual confusion. For the reasons explained, Louis Vuitton's motion is granted and Hyundai's motion is denied. for 286 Notice of Appeal, filed by Akanoc Solutions, Inc., Managed Solutions Group, Inc., Steven Chen. § 1125(c)(5)(B)(i) allows for damages only if a defendant "willfully intended to trade on the recognition of the famous mark. Mem. It is statistically significant that 19% of survey respondents, without prompting, identified Louis Vuitton as a brand shown in the ad, as is the 30% of participants who, when asked in Hyundai's survey to focus their attention on the basketball, said that it reminded them of Louis Vuitton. (Def. Supplemental 56.1 ¶ 17.). Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 116 (2d Cir.2006) (concluding that a "new Multicolore" of the Louis Vuitton Toile mark was "inherently distinctive"); Burberry Ltd., 2009 WL 1675080, at *10–13 (concluding that Burberry's luxury markings were distinct). 56.1 ¶ 5; Pl. As noted, the Court has not relied on the oral comments of the focus groups. The plaintiff-appellee, Louis Vuitton Malletier, S.A. (“Louis Vuitton”) sells high-end handbags and similar products. (Pl. And the point here was not to actually make fun of Louis Vuitton or criticize Louis Vuitton, was it? (Pl. In fact, you could have—had you wanted to, you could have continued to do the ad and have it make sense without any additional basketball scene at all; isn't that true? Hyundai asserts that Stamm's conclusions are unreliable because they are extrapolations based on studies of year-long advertising campaigns that do not compare to the "Luxury" ad's limited run. A. "Still, a finding that two marks lack similarity is probative. at 113 (alterations in original; quoting Hormel Foods Corp. v. Jim Henson Productions, Inc., 73 F.3d 497, 506 (2d Cir.1996)). Louis Vuitton also argues that while its consumers are sophisticated, because the basketball's markings are nearly identical to the Louis Vuitton marks, the factor either is neutral or tips in Louis Vuitton's favor. This similarity was intended by Hyundai. And, in fact, you weren't commenting in any way or giving any commentary on Louis Vuitton, were you? Discover Louis Vuitton LV Malletier 25mm: Thin and feminine, this elegant belt pays tribute to the architecture of Louis Vuitton's historic trunks. In this case, however, the brief appearance of the Louis Vuitton-like marks heightens the similarities. Similarly, Perry testified that any commentary in the "Luxury" ad was of a broad, societal nature, and not directed to any item or brand. ), Louis Vuitton's expert, John R. Hauser, SC.D., conducted a double-blind internet survey from April 9 to 17, 2011. Assignee: Louis Vuitton Malletier Inventor: Antoine Abel Handbag. 15 U.S.C. Thank you. A separate e-mail in the chain states: "Unfortunately we have not found one who would be open to participating yet." Additionally, Louis Vuitton also has submitted a record that reflects aggressive anti-counterfeiting measures. Based on the record, summary judgment is granted to plaintiff on its New York law claim for dilution by blurring. Starbucks explained that no single factor is outcome-determinative, and concluded that a district court erred by focusing on the similarity of marks to the exclusion of other factors. Ewanick, who had been at Hyundai at the time the ad was developed, testified that it was "[c]orrect" to say that Hyundai "used the Louis Vuitton[-]like marks in order to raise the image of the Hyundai brand in the mind of the consumer[.]" 600 F.3d at 112. (Def. (Pl. Découvrez les univers de Nicolas Ghesquière et Virgil Abloh : sacs de luxe, sneakers, parfums, montres. 56.1 ¶ 18.). § 1125(a)(1) (A) and 1114(1); and Count IV asserts common-law unfair competition under New York law. Louis Vuitton Malletier SA (Finland) branch LOUIS VUITTON MALLETIER (India, 3 Oct 2000 - ) branch LOUIS VUITTON MALLETIER SA (Belgium, 12 Jun 2013 - ) LOUIS VUITTON NEW ZEALAND LIMITED (New Zealand, 23 Jul 1991 - ) LOUIS VUITTON DANMARK A/S (Denmark, 1 Jan 1988 - ) inactive branch LOUIS VUITTON MALLETIER (New Zealand, 11 Nov 2008-23 Apr 2012) ¶ 12. "Some classic examples of blurring include 'hypothetical anomalies as Dupont shoes, Buick aspirin tablets, Schlitz varnish, Kodak pianos, Bulova gowns, and so forth.' 56.1 Resp. 56.1 ¶ 25; Pl. "Statutory analysis necessarily begins with the plain meaning of a law's text and, absent ambiguity, will generally end there." Louis Vuitton responded to the "My Humps" video with a cease-and-desist letter, requires royalties for the Tiffany pendant, and consciously elects to provide its products to celebrities as a marketing strategy. Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 2011 WL 6747431, at *4 (S.D.N.Y. In Dallas Cowboys Cheerleaders, 604 F.2d at 204, the defendant, which owned an adult-movie theater, argued that there could be no instance of confusion as to whether an adult film "originated with" plaintiff Dallas Cowboys Cheerleaders, Inc. based on the film's display of marks highly similar to those used by the well known cheerleading squad. Dec.23, 2011). ¶¶ 27–29; Pl. ¶ 26.) Bag in the shop window of Louis Vuitton store in the City of London on 28th January 2020 in London, England, United Kingdom. 1115, 155 L.Ed.2d 1 (2003). "As Louis Vuitton notes, the question is not only compound, but requires participants to draw a legal conclusion as to Hyundai's obligations. (pet perfume called "Timmy Holedigger" was an "obvious parod[y]" of Tommy Hilfiger brand); Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 260–61 (4th Cir.2007) (reciting "immediate[ ]" differences between dog chew toy and Louis Vuitton products). Seventy-two percent of test-group participants noticed the basketball design (compared to five percent of control-group respondents) and fifteen percent of the test-group recognized the design as belonging to Louis Vuitton; twenty-nine percent of all test-group respondents recognized it as some type of luxury mark. Absent exceedingly close scrutiny, the component elements of the Louis Vuitton Toile Monogram, and their overall effect, are virtually indistinguishable from Hyundai's stylized basketball design. at 16.) A. The photo-intensive book asserts claims such as, "[t]he paths of the Louis Vuitton company and the automobile world have often crossed," and offers detailed accounts of "the Louis Vuitton Classic," a series of annual events that includes awards to rare and vintage automobiles. K at 5:29.) Indeed, the brevity of the basketballs appearance in the "Luxury" ad, totaling approximately one second, renders it more difficult to assess the minor differences between the Louis Vuitton marks and Hyundai's alterations. Starbucks, 588 F.3d at 105: Tiffany (NJ), 600 F.3d at 111. ), Hyundai, however, contends that Louis Vuitton has permitted unlicensed, third-party uses of its marks. ¶ 3; quotation marks and alteration omitted. cc at 13–14.) 56.1 Resp. at 14.) (Kruse Dec. Ex. Hyundai argues that Louis Vuitton has a ' "conspicuous absence' of survey evidence," but plaintiff's record in support of summary judgment includes both its own expert's report, as well as the report of Hyundai's expert. Il a été le fondateur de la marque Louis Vuitton, aujourd'hui détenue par LVMH. Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 591 F.Supp.2d 1098, 1112 (N.D.Cal.2008). Viewed in context of the commercial, the brevity of the basketball's appearance, if anything, renders it more difficult to distinguish between the original Louis Vuitton marks and the minor variations made by Hyundai to "genericize" the marks. Hyundai moves for summary judgment in its favor on all five counts. (Solitro Dec. Exs. Based upon the record submitted by the parties, there is virtually no competitive proximity between Louis Vuitton's luxury consumer goods and Hyundai's automobiles. 15 U.S.C. at 19.) (See, e.g., Kxuse Dec. Ex. Moreover, Hyundai has acknowledged that it intended to make no comment on the Louis Vuitton mark, but instead offered a broader social critique. at 14.) ¶ 25.) Id. The ad, which would eventually air five times over the course of a month, included a one-second shot of a basketball decorated with a distinctive pattern resembling the famous trademarks of plaintiff Louis Vuitton Malletier, S.A. ("Louis Vuitton"). (Id.) (Pl. L at 142–44.) Hyundai has moved for summary judgment in its favor on all claims asserted by Louis Vuitton. 15 U.S.C. ), Louis Vuitton commenced this litigation on March 1, 2010. 15 U.S.C. As previously discussed, there is minimal competitive proximity between Louis Vuitton and Hyundai. Mem. 56.1 ¶ 5), The commercial's "scene of an inner-city basketball game" features "a basketball bearing marks similar, but not identical," to the Louis Vuitton marks. Louis Vuitton Malletier. Such testimony reflects the conscious intent within Hyundai to ladder and borrow from the equity of Louis Vuitton marks while also circumventing any obligation to seek Louis Vuitton's permission. (Def. When counsel asked Perry whether he "wanted to create an association with Louis Vuitton," Perry answered, "With luxury. Boone answered in the affirmative when asked whether the marks were designed to evoke "Louis Vuitton in particular." Mem. Yes." Although this provision speaks only of injunctive relief, at 15 U.S.C. (Def. Discover Louis Vuitton LV Malletier 25mm: Thin and feminine, this elegant belt pays tribute to the architecture of Louis Vuitton's historic trunks. Nabisco, 191 F.3d at 218. (Kruse Dec. Ex. N.Y. Gen. Louis Vuitton has established blurring under the TDRA as a matter of law.[7]. §§ 1114, 1125; 17 U.S.C. Opp. Q. Mem. United States District Court, S.D. Judgment of the Court (Grand Chamber) of 23 March 2010. Applying the Copyright Act, Rogers v. Koons, 960 F.2d 301, 310 (2d Cir.1992), stated that absent a requirement that "the copied work must be, at least in part, an object of the parody,""there would be no real limitation on the copier's use of another's copyrighted work to make a statement on some aspect of society at large.". (Def. TCPIP Holding Co., 244 F.3d at 95. As described by Hyundai, the "Luxury" ad. bb at LOU03467.) See, e.g., Costello v. City of Burlington, 632 F.3d 41, 45 (2d Cir.2011). Opp. 588 F.3d at 109, 2011 WL 6747431, at *4. Find your next job in the luxury and fashion industry. See Sterling Drug. According to Louis Vuitton's expert, among those who recognized the Louis Vuitton mark, sixty-two percent believed the ad was approved by Louis Vuitton. The instances of parody that Hyundai cites involve over-the-top, unmistakable parodies of an original. (Def. Because Hyundai has disclaimed any comment, criticism or parody of Louis Vuitton, the "Luxury" ad does not, as a matter of law, qualify for fair use under the TDRA. In Louis Vuitton Malletier. Louis Vuitton Malletier SA.