Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp.
426 F.3d 532
Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532 (2005), is the United States Second Circuit decision that provides the standard for determining likelihood of confusion in fashion handbags. According to the Burlington decision, a contextual analysis is necessary for determining whether likelihood of confusion has occurred under a trademark infringement raised pursuant to the Lanham Act. With respect to fashion products, Burlington effectively overturned prior likelihood of confusion tests, which held that confusion as to source indication should be determined through simultaneous, side-by-side comparison. Specifically, Burlington ruled that courts must adopt the perspectives of “ordinary consumers encountering the products individually under typical purchasing conditions.”
Plaintiff, Louis Vuitton Malletier, is a “famous French fashion design firm engaged in the business of deigning, manufacturing, importing, advertising, selling and distributing signer luggage, handbags, travel leather accessories, high fashion apparel and accessories.”1 Defendant Burlington Coat Factory is “a discount clothing and accessory retail chain which has become famous for selling name-brand fashions and accessories at discount prices.”2
History of the Case
In April 2004, the plaintiff, Louis Vuitton Malletier (“LVM”), filed suit against the defendant, Burlington Coat Factory (“BCF”), in response to BCF’s alleged infringement of LVM’s “Multicolore” handbags. The Multicolore3 trademark was developed in 2002 by LVM’s fashion designer, Marc Jacobs, and Tokyo-based artist Takashi Murakami, and placed on the market in the spring of 2003. Though the Multicolore marks are unregistered, they are based off of LVM’s Toile marks, which are protected by eight registered marks.4 LVM handbags, including those bearing the Multicolore mark, are sold only in LVM’s own stores, and select department and specialty retail stores.
In October 2003, BCF started selling a line of bags under the “Pengyuan” name. Each bag was fully beaded, had a white or black background, bore colorful shapes such as circles, diamonds, and flowers, and bore the letters “NY,” standing for New York, in bold and bright colors. These bags retailed at $29.98 per bag.
Lower Court’s Ruling
Judge Berman, in the district court ruling, 2004 WL 1161167, 2004 U.S. Dist. LEXIS 9387, found that the BCF and LVM bags “project[ed] wholly different impressions” and that they were sufficiently dissimilar as to not confuse consumers through their similarities.5 In denying LVM’s motion for a preliminary injunction, Berman stated that, “[s]ignificant differences between the handbags are easily discernable, whether one views the handbags side by side or from a distance.”6
Second Circuit’s Opinion
The Second Circuit found error in the district court’s application of the Polaroid factors, stating that the Lanham Act “required a court to analyze the similarity of the products in light of the way in which the marks are actually displayed in their purchasing context.”7 Though the district court provided ample case law to support its conclusion that visual inspection justified denial of preliminary injunction, the Circuit Court cited (rather dated) precedent, such as American Home Prods. Corp v. Johnson Chem. Co., 589 F.2d 103 (2d Cir. 1978) and Harold F. Ritchie, Inc. v. Chesebrough-Pond’s, Inc., 281 F.2d 755 (2d Cir.1960). The Court found that the present case involved an issue of serial viewing, and thus tests based on simultaneous viewing were inapplicable.8 It further stated that courts must evaluate “whether [the bags] are likely to be memorable enough to dispel confusion on serial viewing.”9
Importantly, the Second Circuit decided that the policy of the Lanham Act was to eliminate not only confusion from simultaneous viewing, but also “real world confusion.”10 Instead of adopting a black and white, side-by-side analysis, BCF expanded the court’s role by requiring a focus on market conditions. The Lanham Act thus prevents not only point-of-sale confusion, but also “reverse confusion, initial interest confusion, and post-sale confusion.”
Effect of Second Circuit’s Decision
The Second Circuit’s adoption of a serial viewing test has greatly altered the judiciary’s analysis of “likelihood of confusion.” The courts have applied this principle to a plethora of matters, including the progeny of Louis Vuitton Malletier v. Dooney & Bourke, Inc. cases.11 In the appellate court ruling, Judge Cardamone stated, “[u]tilizing a side-by-side comparison can be a useful ‘heuristic means of investigating similarities and differences in ... respective designs,’ so long as a court maintains a "focus on the ultimate issue of the likelihood of consumer confusion."12
Of course, the implications of this test may be costly. Instead of a simple side-by-side examination of two contested products, litigants must now conduct, and pay for, extensive consumer studies and surveys which gauge whether consumers were confused under the market settings and conditions.13 While a serial viewing examination may provide a more accurate assessment as to likelihood of confusion by consumers, it may also serve as a barrier to prosecution by designers less endowed than LVM.