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Upcycling: Environmentally, But Not Legally, Sustainable?

March 27, 2024

Marie Ignozzi

French designer, Louis Vuitton, is in the midst of an interesting intellectual property dispute with a clothier in Houston over “upcycled” materials. The apparel company, Keep It Gypsy Inc “KIG” admittedly uses swatches taken from Louis Vuitton’s designer clothing and handbags and turns them into new apparel or accessories which KIG sells for profit online. According to its website, KIG sells its products under a disclaimer that they are “upcycled,” meaning made from waste materials, and created with “legally purchased used Louis Vuitton products.” A quick search online turns up many private artist’s content on sites such as YouTube and Etsy, depicting similar efforts to take used, premier designer products with well-known branded logos and repurpose them to create new handbags, apparel, and accessories. While clever and creative, this could prove problematic.

In a lawsuit pending in a federal Texas court, Louis Vuitton is seeking monetary damages and an injunction against KIG for its alleged infringement of trademarks. As many would recognize, Louis Vuitton is known for its signature “LV” logo and floral pattern, often called its “Monogram Flower.” According to the Complaint, KIG took swatches of fabric bearing the Louis Vuitton trademarks, and “incorporated them into handbags, wallets, jewelry, accessories, and apparel items that are advertised and sold as ‘handcrafted American-made leather goods.’” In the lawsuit, Louis Vuitton notes it sent a “cease and desist” letter to KIG back in 2019 warning of its infringing efforts, but since then, it uncovered more than 15,000 infringing items that KIG sold. Louis Vuitton claims that KIG’s use of its products and signature trademarks was not authorized and are counterfeit. It alleges that KIG did so “to unfairly capitalize and trade on the popularity and goodwill of the Louis Vuitton brand.”

The name of the action is Louis Vuitton Malletier SAS v. Keep It Gypsy Inc., et al, Case No. 3:23-cv-02569 and is filed in the United States District Court for the Northern District of Texas. In it, Louis Vuitton is asking for an injunction that will bar KIG from further use of its trademarks and signature logos. It also seeks damages amounting to either the profits that KIG earned in using its logo or monetary damages per counterfeit mark per type of good sold.

The lawsuit is under attack for procedural reasons. Louis Vuitton filed this lawsuit in a Texas federal court in 2023. KIG is asking that the lawsuit be dismissed because Louis Vuitton waited too long to file suit. At first glance, waiting 4 years since sending the initial “cease and desist” letter in 2019 appears to be beyond a statute of limitations, but the question remains whether those 15,000+ items KIG created and sold since receiving notice resulted in a new or continuing infringement.

This action serves as a reminder that not only high-end designer brands have trademarks and protected intellectual property. A decision here could open the door for future disputes with the You-Tubers and Etsy artists that are similarly “upcycling” and selling repurposed items for profit. This is not limited to premier designer brands. Small companies with logos or other branding can likewise secure intellectual property rights.

In this era plagued with environmental concerns, consumers are, rightfully, doing their part to “reduce, reuse, and recycle.” Upcycling is a recent trend to transform used or unwanted materials into something of greater quality. However, it is important that any such efforts do not infringe upon other’s property rights, including their intellectual property. If you have created a logo or have branding content that you want protected, you should contact the business attorneys at RKW to make sure you have the appropriate protections in place.


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