On April 24, the Southern District of New York revisited Louis Vuitton Malletier v. Dooney & Bourke, Inc., in preparation for the parties’ upcoming infringement and dilution trial stemming from their arguably similar handbags. (Louis Vuitton’s complaint here.) In doing so, the court found the Trademark Dilution Revision Act’s “likelihood of dilution” standard did not apply retroactively to claims for monetary relief. Therefore, it found Louis Vuitton must prove “actual dilution” before it can recover damages. This finding differs from courts’ retroactive application of the TDRA to requests for injunctive relief.
The TDRA states: “In an action brought under this subsection, the owner of a famous mark shall be entitled to injunctive relief as set forth in section 1116 of this title. The owner of the famous mark shall also be entitled to the remedies set forth in sections 1117(a) [providing for damages] … [if] the mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment was first use in commerce by the person against whom the injunction is sought after October 6, 2006….”
Louis Vuitton argued this provision entitles it to recover damages on its dilution claim by proving Dooney & Bourke is using a mark that is “likely to cause dilution.”
The court disagreed. It found: “The second sentence of subsection 1125(c)(5), entitling owners of famous marks to dilution damages, contains an unambiguous date restriction that authorizes the application of the ‘likelihood of dilution’ standard as a basis for recovering damages to civil actions where the dilution mark or trade name was first introduced after October 6, 2006.”
The court added: “Louis Vuitton attempts to evade this express proscription by arguing that ‘the TDRA is ambiguous as to its temporal reach.’ This is nonsense. The language of subsection 1125(c)(5) providing for monetary remedies unambiguously and explicitly prescribes its temporal scope to the day. Congress did not intend that the relaxed evidentiary standard would apply retroactively, and it is difficult to imagine how Congress could have been any clearer on this point.
“Louis Vuitton’s federal dilution claim is not, as Louis Vuitton suggests, ‘extinguished’ if the Court declines to retroactively apply the ‘likelihood of dilution’ standard to its prayer for monetary relief. Rather, the controlling standard is that which governed prior to the TDRA. Accordingly, Louis Vuitton’s federal dilution claim survives, although under the applicable standard, it will not reap monetary remedies absent a showing of actual dilution.”
In the court’s view, the TDRA should be applied retroactively to requests for injunctive relief but prospectively to claims for monetary relief because the first sentence of subsection 15 U.S.C. § 1125(c)(5), which provides for injunctive relief, “lacks any reference to the explicit date restriction contained in the second sentence, which addresses monetary relief.”
The case cite is Malletier v. Dooney & Bourke, Inc., No. 04-2990, 2007 WL 1222589 (S.D.N.Y.).