Louis Vuitton Malletier S.A. v. Sunny Merchandise Corp.
2015 U.S. Dist. LEXIS 42630
| S.D.N.Y. | 2015Background
- Louis Vuitton sues Sunny and Tsai over use of LOUIS VALENTIN and LOUIS»V on sunglasses and related designs allegedly infringing LV's Damier, LV, and Flower Marks.
- Sunny imports inexpensive Chinese-made sunglasses; Tsai allegedly involved as president/founder though his day-to-day role is disputed.
- Louis Vuitton asserts federal Lanham Act claims and state-law trademark claims; Sunny and Tsai move for partial summary judgment and to exclude LV’s experts.
- Court grants LV’s partial summary judgment on infringement, denies on counterfeiting; denies in part Defendants’ summary judgment and grants/denies redactions as described.
- Court holds Tsai not personally liable for trademark infringement; grants summary judgment against Tsai on those claims.
- Parties challenge expert testimony under Daubert; the court rules on admissibility in part and retains weight for trial.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion for LV’s marks | LV’s strong, famous marks and mark similarity with Sunny favor confusion | Sunny argues different price points and channels negate proximity | LV granted summary judgment on infringement (likelihood of confusion) |
| Counterfeiting claims against LV and Flower marks | Counterfeiting shown by near-identical marks despite quality differences | Differences in design/quality negate substantial similarity | Counterfeiting claims denied for both sides; genuine issue remains |
| Personal liability of Gene Tsai | Tsai as president/director directed or participated in infringing activity | Tsai not involved in operations since 2003 heart attack; not the moving force | Tsai granted summary judgment; not personally liable |
| Admissibility of proposed expert testimony | Experts’ methodologies reliable; Daubert standards met | Various Daubert challenges; some flaws argued | Defendants’ non-Daubert objections overruled; some Matlins/Mantis/Ford/Mulhern rulings split; redactions addressed |
Key Cases Cited
- Virgin Enters. Ltd. v. Nawab, 335 F.3d 141 (2d Cir. 2003) (factors for likelihood of confusion; fame strengthens protection)
- Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961) (nonexclusive eight-factor test for likelihood of confusion)
- Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254 (2d Cir. 1987) (Polaroid factors; broad protection for strong marks)
- Gruner + Jahr USA Publ’g v. Meredith Corp., 991 F.2d 1072 (2d Cir. 1993) (policies on credibility and confusion in publication/branding context)
- Nikon Inc. v. Ikon Corp., 987 F.2d 91 (2d Cir. 1993) (likelihood of confusion in branding and market proximity)