LVL XIII Brands, Inc. v. LVMH Moet Hennessy Louis Vuitton SA, et al.

LVL XIII's Summary Judgment Brief Against Louis Vuitton for Trademark Infringement

by Ronald Coleman
Contact

From the Preliminary Statement:

Antonio Brown started his company, LVL XIII Brands, Inc. (pronounced “Level 13” in December 2012 on what was, unquestionably, a “shoe string” budget. What he lacked in capital, however, he made up for in resourcefulness and marketing acumen, harnessing the power of the Internet to develop a loyal brand that responded to LVL XIII’s style innovation and street attitude. His winning mix of social media leadership, urban hip, and bona fide penetration into a desirable consumer market – upscale luxury sneakers – was not only noticed by his fans, customers and a steadily-growing circle of national and international fashion media and recognizable superstars in the African American entertainment and fashion worlds. LVL XIII’s viral success was noticed, the facts suggest, by defendants Louis Vuitton Malletier SA and Louis Vuitton North America, Inc. (collectively, “Louis Vuitton”), who, the facts affirmatively show, targeted, appropriated and all but destroyed his enterprise.

Louis Vuitton did this to feed an Old World “house of style” that had long run dry of creativity and had no clue of how to design and sell fashion for a subculture that the record shows Antonio Brown had not only captivated but which had, in fact, itself produced Antonio Brown. It was no surprise that he succeeded in penetrating the market for his luxury sneakers because he knew it intimately in a way Louis Vuitton never could. Among the celebrities drawn to LVL XIII’s cutting-edge sneaker styles that all contain a distinctive rectangular metal plate across the front of the shoe toe (the “Metal Toe Plate” or “Mark”) were male supermodel Tyson Beckford and recording artists Chris Brown and Jason Derulo, the last of whom chose – on his own initiative – LVL XIII sneakers for two live performances on ABC’s Good Morning America in the summer and fall of 2013, months before Louis Vuitton debuted its infringing On the Road Sneaker (“OTR

Sneaker”) in the U.S in March 2014. LVL XIII’s business grew, generating growing social media “buzz” and sneaker revenues of $141,241 in just six months. Antonio Brown’s dream of becoming a rare minority-group player in the white-dominated luxury goods industry was in reach.

Louis Vuitton did not set out to destroy that dream when it decided to knock off the LVL XIII Mark – not exactly. It was nothing personal, or racial. It was just business. The question was not if Louis Vuitton would infringe someone else’s sneaker design for the Spring / Summer season of 2014 – it was whose design it would rip off. Desperate to invigorate its lagging sales, it had nonetheless heard rumblings that the initial men’s footwear designs conceived for its Men’s Spring/Summer 2014 Fashion Show looked too much like Converse’s iconic “Jack Purcell” men’s casual shoe for comfort. Louis Vuitton needed a proven design, but not one from a rival from which it had be concerned would bring a legal challenge. In contrast, LVL XIII’s startup profile, relatively small sales and quick adoption in key markets, plus the novelty of the Mark – i.e., the metal toe plate – seemed like a much wiser source of “inspiration.”

Louis Vuitton quickly rolled out its OTR Sneaker, with a toe plate which, from any reasonable distance, instantly evoked the LVL XIII Mark among anyone familiar with the market. Consumers and the trade were, indeed, quickly confused. LVL XIII also suffered from “reverse confusion," whereby retail store buyers who had been interested in adding LVL XIII’s athletic footwear to their inventory in the spring of 2014 suddenly balked after encountering promotions for the OTR Sneaker – erroneously concluding that the startup LVL XIII must have infringed the item being sold by the older, established, “respectable” Louis Vuitton!

Disaster followed for LVL XIII. Vuitton’s response has been, unsurprisingly, to follow the axiom that the best defense is a good offense, brushing off all attempts at settlement and filing its own tortured infringement counterclaims against LVL XIII . . .

These issues are ripe for summary judgment . . . [T]he submissions of the two sides demonstrate that this case is as simple as it sounds: Louis Vuitton willfully infringed the distinctive trademark of the much smaller start-up LVL XIII under the mistaken belief that, because of its sheer size and dominance within the luxury goods market, it could do so with impunity. On the actual record, however, and based on the law, the Court should use this juncture, at which so much, if not all, of the issues in dispute are ripe for adjudication, to correct defendants’ serious misperception. They have infringed LVL XIII’s rights, and should be called to account.

LOADING PDF: If there are any problems, click here to download the file.

Reference Info: Legal Memoranda: Motions for Summary Judgment/Adjudication | Federal, 2nd Circuit, New York | United States

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Ronald Coleman, Archer & Greiner, PC | Attorney Advertising

Written by:

Ronald Coleman
Contact
more
less

Archer & Greiner, PC on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.