You Be the Judge! Page 146

132

ASE: 17

You Be the Judge!

Sources

The case brie ng above contains excerpts and direct extractions from the sources noted

below that have been combined with the author's own expert legal input. The case has

been condensed and formatted from its original content for purposes of this workbook.
Malletier v. Dooney & Bourke, Inc., 525 F.Supp.2d 558 (S.D.N.Y. 2007).

United States District Court, Southern District of New York

December 13, 2007. Opinion written by the Honorable Justice Shira A. Scheindlin.

Intellectual property

refers to the creations

of the mind: inventions,

symbols, names, images,

and designs used in

commerce. There

are three types of

intellectual property:

trademarks, patents, and

copyrights.

The United States

Patent and Trademark

Offi ce (USPTO) is

the Federal agency

for granting U.S.

patents and registering

trademarks.

Defendant Dooney & Bourke, an American handbag designer and

manufacturer, was founded in 1975. Since 2001, as part of Dooney &
Bourke's "Signature" and "Mini Signature" lines, the company sold
bags featuring the DB monogram of interlocking initials, a registered
trademark, in a repeated pattern. e "It Bag" products sold from $50
to $400. As of late 2006, more than 1.76 million products had sold
with sales gures over $100 million.

In the Fall of 2002, Peter Dooney, president and chief designer of

Dooney & Bourke, began collaborating with Teen Vogue magazine on
a joint promotional project. e magazine selected a group of teen-
age girls to travel with Dooney to Italy in March 2003 to help develop
Dooney & Bourke handbags appealing to teenagers. e group,
dubbed the "It Team," was photographed looking into Vuitton's store
window display featuring handbags with the multicolor marks on a
white background. Another photograph taken during the trip showed
the group in a factory viewing a swatch of fabric with LouisVuitton's
multicolor mark on a black background.

A year later, in late July 2003, Dooney & Bourke introduced the "It

Bag" collection featuring the DB monogram in an array of bright col-
ors set against a white background. e intertwined initials, with the
"D" and the "B" displayed in contrasting colors, were printed forward
and backward in repeating diagonal rows. e handbags also sported
a multicolor zipper, with fabric similar to that used by Vuitton, and a
small pink enamel heart bearing the legend "Dooney & Bourke" on
a tag hanging from the handle. In October 2003, Dooney & Bourke
began selling the handbags with a black background. e "It Bag"
collection now included a variety of colored backgrounds (periwinkle,
bubble gum, and grape) in addition to black and white.

Louis Vuitton asked the court to stop Dooney & Bourke's sale of its

new bags arguing that the bags were so similar that they were likely to
cause "consumer confusion" with potential purchasers of its handbags.

For Evaluation Purposes Only