Christian Dior Couture SA v. Lin

Background

Christian Dior Couture SA originally sought emergency relief under federal trademark law, including a temporary restraining order, an authorized seizure, expedited discovery, and a preliminary injunction. On January 4, 2023, the court granted that application. On January 12, investigators working with the New York City Police Department executed the authorized seizure near 120 Lafayette Street in New York and seized thousands of items from several defendants.

After preparing an inventory, Christian Dior’s investigators found that many seized items also bore Louis Vuitton trademarks. The inventory identified 1,190 handbags, duffle bags, backpacks, and wallets; 29 belts; and five inventory pamphlets or sheets bearing Louis Vuitton trademarks. Louis Vuitton then sought to join the case as a plaintiff, obtain emergency relief concerning products bearing its marks, and obtain a preliminary injunction. The court granted that application on February 2, 2023. Louis Vuitton served the listed defendants, and the defendants did not file papers opposing the application or the preliminary injunction.

Court’s Analysis

The court found that Louis Vuitton owned several valid federal trademark registrations, including LOUIS VUITTON, LOUIS VUITTON PARIS, the stylized LV mark, and various design marks. It also found that Louis Vuitton had advertised and promoted those marks extensively for many decades, and that the marks were well known and had acquired strong significance among the purchasing public.

For a preliminary injunction, the court applied four factors: likelihood of success on the merits, likelihood of irreparable harm without an injunction, the balance of hardships, and the public interest. The court found that Louis Vuitton was likely to succeed on its trademark infringement and counterfeiting claims because defendants were using identical or substantially indistinguishable copies of the marks in connection with counterfeit products, making consumer confusion nearly certain.

The court applied the same basic analysis to Louis Vuitton’s federal false-designation-of-origin and unfair-competition claims under the Lanham Act. It also found likely success on Louis Vuitton’s New York common-law unfair-competition claim because bad faith was presumed from the demonstrated likelihood of success on the infringement and counterfeiting claims.

The court further found likely success on federal and New York trademark-dilution claims. It concluded that the marks were famous, that defendants trafficked the products in commerce after the marks became famous, and that counterfeit products were likely to cause dilution by blurring and tarnishment. Because Louis Vuitton showed likely success on the merits, the court stated that irreparable injury could be presumed. It also found that Louis Vuitton’s goodwill and reputation would suffer, consumers could be confused, defendants could continue profiting, and an injunction would serve the public interest.

Order

The court entered a preliminary injunction pending the final hearing and determination of the action. The injunction applies to Xiaole Lin, Timi Gift Shop, Inc., Shun Miao Ding, Guo L. Huang, Xiaowei Gao, Xingyun Hu, Ming Li, Fei Y. Lu, Yongchan Zhang, Yu Hou Qu, Cai Qin Xie, Xiaolin Wang a/k/a Li Li Wang, their agents and others acting with them, including Xiugian Chi.

The order prohibits the covered persons from using Louis Vuitton marks in connection with trafficking, manufacturing, importing, exporting, advertising, marketing, distributing, offering for sale, or selling products. It also prohibits conduct that falsely suggests Louis Vuitton’s control or supervision, passing off non-genuine goods as Louis Vuitton products, trafficking in counterfeit products or related materials, infringing Louis Vuitton marks or trade names, making false descriptions of goods, diluting the marks, destroying or failing to preserve relevant counterfeit products or records, and aiding others in those acts.

During the order’s pendency, Louis Vuitton may inspect products bearing its marks to determine whether they are genuine, counterfeit, or infringing. Christian Dior’s and Louis Vuitton’s attorneys, private investigators, or agents may retain the seized products and items identified in the inventory as substitute custodians for the court. Defendants must preserve relevant documents, electronically stored information, and tangible things, and must provide a written, sworn compliance report within 30 days after service of the order.

The court found that the $50,000 bond Louis Vuitton had posted remained sufficient security for costs and damages that defendants might incur from wrongful implementation of the order. Defendants or affected third parties may seek dissolution or modification after giving two business days’ written notice and making a proper showing.

The order also authorizes expedited discovery. Plaintiffs may serve document requests and interrogatories, which served defendants must answer within 14 days. Defendants must appear for depositions, or provide witnesses as appropriate, no later than seven days after receiving deposition notices. The court scheduled a conference for April 7, 2023, to discuss the status of discovery.