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color trademarks,Christian Louboutin,shoes,Travis Burchart

01/06/2012 01:00:00 PM EST

UPDATE: Red Shoes Made for Walking but Not Trademarking? Christian Louboutin Files Reply Brief in Christian Louboutin/Yves Saint Laurent Red Mark Lawsuit

Posted by

Travis Burchart

UPDATE: On Tuesday, January 10^th, Christian Louboutin filed its reply brief, arguing that:

I. the district court erred in:

misconstruing the red outsole mark, ignoring the statutory presumption of validity, and ignoring the burden of proof; and

misapplying the tests for functionality and aesthetic functionality, and

II. Louboutin was entitled to a preliminary injunction because it had shown that:

its red outsole mark acquired secondary meaning;

its red outsole mark is strong ;

its red outsole mark is neither functional under the traditional test nor aesthetically functional;

there is a likelihood of confusion;

the red outsole mark is famous; and

Yves Saint Laurent is not likely to succeed on its fair use defense.

View the entire brief filed in Christian Louboutin S.A. vs. Yves Saint Laurent America Holding, Inc., 11-3303 (2nd Cir. January 10th, 2012).

UPDATE: On January 3rd, various law professors filed an amicus brief in support of Yves Saint Laurent. The brief argues:

the District Court correctly recognized the importance of color to consumers in the particular context of fashion markets, and properly considered the factors that consumers find relevant when purchasing shoes in determining that the red sole, as Louboutin claimed it and as YSL used it, was functional. Louboutin's and its amici's arguments against aesthetic functionality in general, and for protection of single colors in fashion markets in particular, should be rejected in order to preserve freedom of innovation and competition.

....

The point, again, is that the line between "aesthetic" and "utilitarian" product attributes is often more linguistic than real. And for this reason, the Court should reject the rigid and shallow dichotomy between "utilitarian" and "aesthetic" features urged by appellant and INTA, and instead do as the Supreme Court has directed: deem a product feature functional, and therefore outside the ambit of trademark, if it offers a significant non-reputation-related advantage to a competitor. In other words, if the relevant consumers want a product feature because it is especially attractive, then that feature is not a proper subject of monopolization by a single producer - unless it meets the demanding novelty requirement of design patent.

View the entire brief filed in Christian Louboutin S.A. vs. Yves Saint Laurent America Holding, Inc., 11-3303 (2nd Cir. January 3rd, 2012)

UPDATE: On December 27th, Yves Saint Laurent filed its appellate brief with the Second Circuit, presenting the following issues for review:

1. Did the District Court act within its discretion by making a preliminary finding, based on a limited record, that Louboutin was not likely to overcome YSL's functionality defense?

2. Should the District Court's decision also be affirmed on alternative bases, including Louboutin's failure to show irreparable harm, its failure to show a likelihood of overcoming YSL's fair use defense, its failure to establish secondary meaning in its descriptive red-colored trademark, and its failure to prove a likelihood of consumer confusion?

In its Statement of the Case, Saint Laurent argues:

A major theme of the Louboutin appellate brief, and the Tiffany and INTA amicus briefs, is their mischaracterization of the District Court's opinion as having articulated a "sweeping per se rule." Louboutin's brief, for example, includes repeated references to the District Court's supposed "per se ban" on single color trademarks in the fashion industry. But these characterizations are generally unsupported by any cite to actual language in the District Court's opinion, and are contradicted by the text itself.

Nowhere in the opinion did the District Court hold that a single color can never act as a trademark on an item of fashion apparel. The District Court did not even hold that Louboutin's mark is definitively not entitled to trademark protection. Rather, the District Court made only a preliminary finding, based on the limited record developed for and presented at the preliminary injunction hearing, that Louboutin is "unlikely to be able to prove" that its mark is entitled to protection. In fact, at a hearing following the denial of the motion for preliminary injunction, the District Court expressly declined to hold on the merits that Louboutin's mark is not entitled to trademark protection.

To the extent Louboutin, Tiffany and INTA point to any specific part of the District Court's opinion to support their mischaracterizations of it, they identify the District Court's dicta hypothetical about painters. But even if that hypothetical - offered by the District Court as an admittedly fanciful analogy - is susceptible to misuse, the mere possibility that future litigants may misinterpret dicta is not a basis for overturning a decision. Furthermore, it certainly is not a basis for disregarding the District Court's specific findings about the functional nature of the color red when used on shoe outsoles, the non-trademark purposes served by YSL's use of the color red on its outsoles, and the anti-competitive effects that would result if Louboutin were able to assert monopoly rights over red outsoles.

(citations omitted)

View the entire brief filed in Christian Louboutin S.A. vs. Yves Saint Laurent America Holding, Inc., 11-3303 (2nd Cir. December 27, 2011).

UPDATE: On November 14th, the International Trademark Association (INTA) filed an amicus brief with the Second Circuit, stating that:

INTA submits this brief as amicus curiae to address the two legal errors in the District Court's analysis of the validity of the federally-registered Red Sole trademark of appellants Christian Louboutin S.A., Christian Louboutin S.A., L.L.C., and Christian Louboutin (collectively, "appellants") in its Decision and Order dated August 10, 2011 (Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778 F. Supp. 2d 445 (S.D.N.Y. 2011) [enhanced version available to lexis.com subscribers] (hereinafter referred to as "Opinion")) finding them unlikely to succeed on their claims for trademark infringement and unfair competition under the Lanham Trademark Act. INTA urges vacatur and remand for the reasons discussed below. INTA only addresses the District Court's errors with respect to its analysis of the validity of the trademark, and expresses no view on the merits of appellants' claims for trademark infringement or dilution, or whether a preliminary injunction should be entered.

(footnotes omitted)

INTA sets out the district court's errors as follows:

The court incorrectly construed the registration as a broad "claim 'to the color red'" in general for women's designer shoes, ... instead of the narrower claim actually defined in the registration, namely "a lacquered red sole on footwear" (emphasis added). Overlooking the definition in the registration, the court then evaluated the mark as if it were merely a color that an artist or designer would use, rather than a valid trademark identifying the source of appellants' goods ....

Second, the District Court erred in its analysis of the validity of the Red Sole Mark, finding it functional, and thus invalid. In that analysis, the District Court essentially applied the controversial, and limited, doctrine of aesthetic functionality, but did not correctly follow this Court's test for aesthetic functionality, which requires a finding that use of the design is essential to effective competition.

View the entire brief filed in Christian Louboutin S.A. vs. Yves Saint Laurent America Holding, Inc., 11-3303 (2nd Cir. November 14, 2011).

UPDATE: On October 24^th, Tiffany (NJ) LLC and Tiffany and Company filed an amicus brief with the Second Circuit, stating that:

the District Court's opinion in this case adopted a sweeping and unprecedented per se rule against granting trademark protection to any single color that is used on any "fashion item," even where the color has achieved "secondary meaning" and is associated with a single brand. Amicus curiae respectfully submit that adoption of such a blanket rule was unnecessary to a resolution of the preliminary injunction motion below and should be rejected by this Court. As the Supreme Court and this Court have made clear, whether any given mark has achieved secondary meaning or is subject to a defense of functionality is to be decided on a case by case basis, and there is no need to issue a broad edict forbidding trademark protection for color marks in an entire industry. Further, this Court has held that functionality is to be decided only after other issues, such as likelihood of confusion, have been resolved. Accordingly, the District Court should have attempted to resolve the preliminary injunction motion on narrower grounds, and had no need for the broad rule it adopted.

Curiously, Tiffany is represented by Fross Zelnick Lehrman & Zissu, P.C. As stated in Footnote 1:

counsel for Tiffany, Fross Zelnick Lehrman & Zissu, P.C. ("Fross Zelnick"), represented Christian Louboutin before the United States Patent and Trademark Office in 2008 in securing the "Red Sole Mark" registration at issue in this action and in filing other trademark applications.

View the entire brief filed in Christian Louboutin S.A. vs. Yves Saint Laurent America Holding, Inc., 11-3303 (2^nd Cir. October 24, 2011).

UPDATE: On October 17^th, Christian Louboutin filed an appellate brief with the Second Circuit, presenting the following issues for review:

Was it error for the district court to refuse to enforce Louboutin's trademark rights in its federally registered Red Outsole Mark, after finding the mark to be distinctive, strong and world famous, on the ground that a single color may not act as a trademark in the fashion industry?
Was it error for the district court to rule that a single color on a fashion item could not act as a trademark under the strictly limited doctrine of aesthetic functionality, even where the mark is distinctive, identifies the Louboutin brand, has been granted federal registration under the Lanham Act, and has become famous as an indicator of source for women's high fashion designer footwear?
Did the district court abuse its discretion in denying Louboutin's motion for a preliminary injunction to enforce its distinctive, famous, federally registered Red Outsole Mark based on its newly minted per se bar on single color trademarks in the fashion industry, where it gave no weight to the statutory presumption of trademark validity, applied an erroneous analysis of trademark infringement and trademark dilution, ignored undisputed proof of likelihood of confusion and irreparable harm, and found hindrance to competition in the fashion industry contrary to the facts of record?

View the entire brief filed in Christian Louboutin S.A. vs. Yves Saint Laurent America Holding, Inc., 11-3303 (2^nd Cir. October 17, 2011).

Original Post (August 10, 2011)

Red Shoes Made for Walking but Not Trademarking? Decision Jeopardizes Louboutin's Red Mark Lawsuit against Yves Saint Laurent

Red Might Be Fashionable But Not Protectable

In April, Christian Louboutin sued Yves Saint-Laurent for trademark infringement, claiming that Yves Saint-Laurent's line of shoes infringed Louboutin's distinctive red soles.Yesterday, Judge Marrero disposed of Louboutin's motion for a preliminary injunction and, in doing so, set the stage for the cancellation of Louboutin's red shoe mark:

DECISION AND ORDER denying 17 Motion for Preliminary Injunction. For the reasons stated above, it is hereby ORDERED that the motion (Docket No. 17) of plaintiffs Christian Louboutin S.A., Christian Louboutin, L.L.C. and Christian Louboutin individually for a preliminary injunction is DENIED; and it is further ORDERED that counsel for all parties are directed to appear for a case management conference on August 17, 2011 at 2:00 p.m., at which Louboutin shall show cause why the record of this action as it now exists should not be converted into a motion for partial summary judgment cancelling Louboutin's trademark at the issue here for the reasons stated in the Court's decision above. (Signed by Judge Victor Marrero on 8/10/2011) (mro) (Entered: 08/10/2011)

What Do Monet and Picasso Have in Common with a Red Shoes Trademark?

In discussing the protectability of a "single color," Judge Marrero narrowed his scope to fashion and analogized it to the world of art. He stated in his decision: