Big Blow to Christian Louboutin

This is a long one, feel free to grab a glass of wine.

If you’re in the fashion world, unless you’ve been under a rock, you’ve likely heard about the rumblings between Christian Louboutin and Yves Saint Laurent.  CanadaFashionLaw has been covering this matter step-by-step with interest.

In a recent decision by US District Judge Victor Marrero, Christian Louboutin was given a hard blow.

What is the Decision Deciding on?

Christian Louboutin was seeking a preliminary injunction against Yves Saint Laurent, which essentially means that Christian Louboutin was asking the court to ban Yves Saint Laurent from continuing the make the allegedly infringing shoes in the mean time until the court had made its final decision.

In order to obtain a preliminary injunction in the US against Yves Saint Laurent, the onus is on Christian Louboutin to establish:

a) irreparable harm; and

either,

b) a likelihood of success on the merits,

or,

c) sufficiently serious questions going to the merits of its

claim to make them fair ground for litigation

(try saying that three times fast!)

In a Nutshell, What was the Decision?

No, Christian Louboutin was not granted the preliminary injunction.  Yves Saint Laurent can continue to market its red-soled shoes in the meantime until the court makes its final decision.

What Did the Judge Have to Say?

The decision started off very complimentarily to Christian Louboutin.  It was almost novel-like:

            “Sometime around 1992 designer Christian Louboutin had a bright idea.”

“Whether inspired by a stroke of original genius or…copied from King Louis XIV’s red-heeled dancing shoes, or Dorothy’s famous ruby slippers in “The Wizard of Oz”…Christian Louboutin deviated from industry custom.”

“Over the years, the high fashion industry responded, Christian Louboutin’s bold divergence from the worn path paid its dividends.”

“When Hollywood starlets cross red carpets and high fashion models strut runways, and heads turn and eyes drop to the celebrities’ feet, lacquered red outsoles on high-heeled, black shoes flaunt a glamorous statement that pops out at once.”

“For those in the know, cognitive bulbs instantly flash to associate: ‘Louboutin’.”

It was at this point that I thought I was reading the sequel to The Devil Wears Prada…

And then, the judge goes on to discuss how intellectual property laws are created to reward innovation:

“The law, like the marketplace, applauds innovators.  It rewards the trend-setters, the market-makers, the path-finding non-conformists who march to the beat of their own drums.”  (Who knew intellectual property could be so sexy?!)

“To foster such creativity, statutes and common law rules accord to inspired pioneers various means of recompense and incentives.  Through grants of patents and trademark registrations, the law protects ingenuity and penalizes unfair competition.”

Such innovation, such recognition, such media attention!…and, yet, ultimately in this decision the judge questions whether Christian Louboutin’s registered trade-mark is even viable.

Huh, Come Again?

Here’s a summary of the judge’s reasoning:

1.        The judge recognizes that color can be protected as a trade-mark, but there is a functionality bar.  If the color has attained ‘secondary meaning’, whereby the color identifies and distinguishes a brand, it is protectable.

2.         In some industrial markets, products are so standardized in shape, design and general composition that color can be a key distinguishing feature.  Doesn’t the sole of a shoe fits under this analogy?  But, the judge held that the fashion industry is a different beast that should not be given the same benefits.

3.         Because color is so integral to the fashion industry, whose whole mandate is ornamental and aesthetic, color takes a more prominent role.  It defines seasons, trends and tastes.

4.         In the fashion world, according to the judge, color advances expression of ideas through fashion more so than to identify the source of the design, which is a fundamental tenet of trademarks law.

5.        The judge recognized that there are instances when color can play a greater role in a fashion brand’s life, citing Louis Vuitton and Burberry as examples.  Yet, in his opinion, these cases are different as the famed Louis Vuitton and Burberry are comprised of different colors in a design configuration.  Christian Louboutin’s claimed trade-mark is comprised of only one vaguely described color “lacquered red”.

6.        The judge seems to put a fair amount of emphasis on the artistic nature of the fashion industry, thereby differentiating from other consumer products industry, using terms such as “fanciful business” and then launches into an analogy between artists and fashion designers (Monet and Christian Louboutin are, apparently, one and the same), which is a little outside the scope of the matter at hand.

7.        Moreover, emphasis is placed on the transient, trend-obsessed nature of the fashion industry: “it is susceptible to taste, to idiosyncrasies, and whims and moods…”.  Yet, Christian Louboutin consistently uses his red-soled shoes regardless of the whether red, white or pink is the new black.  

8.        Again, the judge states that color plays an important and unique role in fashion – its ornamental nature draws the consumer’s attention.  But isn’t this the same with any other widget that employs color are part of its branding?

9.        The trade-mark registration covers “lacquered red soles” for women’s high fashion designer footwear.  This is an ambiguous color claim and could have significant ramifications for competition.  Should any company be precluded from using any shade of red on any type of shoe.  Would a welly-boot sold from Wal-Mart be an infringement of Christian Louboutin’s trade-mark rights?  This is a valid point.  I wonder if Christian Louboutin had pin-pointed the shade of red or the type of shoe, would the judge have reasoned differently? 

10.      Ultimately, the judge questions whether a color in the fashion industry can be functional and, therefore, not eligible for trade-mark protection.  Christian Louboutin admitted that there were reasons for choosing red.  It’s a flirty, sexy, engaging, eye-catching color. But just because there is a rationale for choosing a color, does that mean that it’s functional?  Would an anti-anxiety tablet that was blue, because of the color’s soothing qualities, not qualify for trade-mark protection on account of the color’s functionality?  The judge also stated that the color was functional because adding the lacquer to the shoe increased the cost of production for the shoe, which validated the increased retail price.  But wouldn’t the affixing of any trade-mark likely increase the production cost?  Nike’s swoosh mark is embroidered into its t-shirts.  The thread is an increased production cost.  Does this make the trade-mark functional because it enables Nike to increase its retail price?

I Wonder…

Would this decision have been different if Christian Louboutin had obtained a slightly different trade-mark registration, eradicating the general nature of the statement of wares and color claim.  If “footwear” read “high heels” and “lacquered red” was a specified Pantone color, would the judge have been persuaded that Christian Louboutin’s trade-mark rights were valid?

What Can we Expect?

Appeal, appeal, appeal.  First, let’s remember that this is not the final decision in the matter.  (Although, it’s not looking good for Christian Louboutin).  But, it’s likely that Christian Louboutin will appeal this to higher courts – he’s got a lot riding on this case.

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