By SUZANNE KAPNER
from nypost.com
from nypost.com
June 3, 2004 -- Upscale handbag maker Dooney & Bourke would normally find itself on the same side of the courtroom as Louis Vuitton when it comes to policing knockoffs.
Now, in a twist that shows how aggressive luxury goods makers are becoming when protecting their trademarks, Louis Vuitton has accused the rival in a lawsuit of ripping off one of its best-selling designs.
The suit, filed in United States District Court, also shines the spotlight on a tricky fashion question: When does a trend cross the line into trademark infringement?
The bag in question is the colorful Murakami, a collaboration with Japanese artist Takashi Murakami, which features the brightly colored Louis Vuitton logo splashed against white or black leather.
Dubbed the "It Bag" by fashion editors, the design was an instant hit when it was introduced last spring and quickly sold out of stores.
The bags also spawned a sea of copycats, according to Louis Vuitton parent LVMH Moet Hennessy Louis Vuitton, which has filed no less than four lawsuits in the past year to protect the design.
Lawyers said the case against Dooney & Bourke is particularly striking, because LVMH has historically focused on counterfeiters — typically small, sometimes shady, operations that try to pass off designer fakes as the real thing.
By contrast, the bags sold by Dooney & Bourke in its own fancy boutiques and upscale department stores feature the company's monogram logo, which itself is protected by trademarks, said Thomas McAndrew, Dooney & Bourke's counsel.
When it comes to protecting against knockoffs, "we are normally on the same side of the ledger as Louis Vuitton," McAndrew said.
LVMH doesn't accuse Dooney & Bourke of counterfeiting, a federal crime that can mean jail time, but rather of trademark infringement, which carries civil penalties.
LVMH declined to comment on pending litigation.
While not a complete novelty, trademark cases still tend to be somewhat of a rarity in fashion and can be harder to prove than cases against counterfeiters, lawyers said.
"Most lawsuits in the fashion industry focus on counterfeiters, who are typically not established retailers or manufacturers," said Joseph Gioconda, a partner with Kirkland & Ellis LLP, who represents Hermes and other luxury companies.
To win its case, lawyers said, LVMH must prove that consumers are likely to confuse the Dooney & Bourke bag, developed in conjunction with Teen Vogue and sold for about $200, with Louis Vuitton's version, which costs $360 to $3,950.
At issue is whether Dooney & Bourke, a Norwalk, Conn.-based company founded in 1975 by designer Peter Dooney and partner Frederick Bourke with a reputation for courting the country club set, put enough of its own creative spin on the design.
"Trademark law doesn't give you a monopoly on a trend," said Edward Di Lello, a lawyer with Darby & Darby, which is defending Burlington Coat Factory Warehouse against separate knock-off claims by Louis Vuitton.
Both Di Lello and McAndrew said the suits against their clients represent a more aggressive strategy than Louis Vuitton has adopted in the past.
"In some instances, Louis Vuitton is mistaking this notion of trademark protection for competition," McAndrew said. "They are a major player in the luxury business, and they've been able to intimidate other entities, sometimes by using the courts."
