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.