By Ashlee Froese of Keyser Mason Ball LLP
Any fashionista worth her Prada knows that Christian Louboutin and Yves Saint Laurent have turned New York courtrooms into their stomping ground over their right to use red bottom soled shoes.
CanadaFashionLaw has been covering this case with interest and reporting on all the developments. It's been a busy (and interesting) couple of months.
If you're fashionably late to the courtroom drama, CanadaFashionLaw provided an overview of what is at stake between the parties. CanadaFashionLaw also provided a detailed summary and analysis of the court's decision that declined Christian Louboutin's request for a preliminary injunction.
As predicted, Christian Louboutin did not take very kindly to the rejection and has issued an appeal against the judgment.
to 'up the legal ante', Tiffany has also put in its two cents and made
submissions to the Court supporting Christian Louboutin's position. No
need for a poker face here, we know that Tiffany is concerned that
about the possible domino effect that the decision could have for
Tiffany's protection of its color trade-mark (robin egg blue for
jewelery boxes). And with that, I've run out of poker analogies. Let the legal games begin!
CanadaFashionLaw, remind me again about the decision that Christian Louboutin is appealing?
OK. Quick run through. Christian Louboutin is well-known for its red bottom-soled shoes. In fact, Christian Louboutin obtained a trade-mark registration in the US for it, which gives them nation-wide exclusivity. Yves Saint Laurent started to incorporate this red bottom-soled shoe in its footwear line. Christian Louboutin came back with "on no you didn't!" and commenced a legal action against Yves Saint Laurent for trade-mark infringement. Christian Louboutin sought an order from the court requesting that Yves Saint Laurent cease from selling these shoes in the meantime until the court made a final decision. The court came back and said - nah, Yves Saint Laurent, go ahead, go on with your bad self. In fact, Christian Louboutin, you may not even have the right to exclusivity after all. Christian Loubouin was not happy with this at all.
Here's a run down of the major points made by the Court in denying Christian Louboutin's request:
Let's Break Down Christian Louboutin's Appeal
Louboutin is seeking to overturn this decision by bringing it to the
attention of the Court of Appeal, a higher level of court. Christian Louboutin posed three questions to the Court of Appeal:
What Did Christian Louboutin Have to Say for Himself?
CanadaFashionLaw read through the 100+ page submissions. Here's a look at the themes:
Christian Louboutin is world renowned,
J-Lo has immortalized the trade-mark by creating a song about Christian Louboutin shoes,
Christian Louboutin shoes are the fifth character of Sex and the City, and
Christian Louboutin is not a painter.
But let's get serious for a second. If this decision stands, it could have serious implications for Christian Louboutin. Christian Louboutin has built its business on the red bottomed soled shoes. It's an integral part of its brand. If
any Yves, Saint or Laurent can use the red bottomed soled shoes, then
the most recognizable component of Christian Louboutin's brand is now up
for grabs for anyone.
Not good new for Christian Louboutin. But this may also have bigger implications beyond Christian Louboutin.
What's With Tiffany Getting Involved?
As the holiday season approaches, what girl isn't having visions of little blue boxes dance in her head? Was everyone thinking of Tiffany jewellery boxes? Thought so. A that's because that blue color applied to those jewellery boxes is an integral feature of Tiffany's brand.
If this decision stands, it basically means that:
A single color may not function as a trade-mark;
If color is applied to a utilitarian article, it may not function as a trademark;
If the color is aesthetically appealing, which draws consumers to the product, it may not function as a trade-mark;
the cost of applying the color increases the production costs on a high
priced item, the color has functional qualities and therefore cannot
function as a trade-mark.
Now, for the non-legal fashionista reader, you may be scratching your head wondering, "CanadaFashionLaw
what are you talking about". The diatribe above was the essence of the
judge's rationale about why Christian Louboutin may not have rights to
its trade-mark. And to a large
extent it flies against the well-established rationale of allowing a
color to function as a trade-mark. If a company consistently uses color
as part of its trade-mark to the point that it becomes a distinguishing
feature to the consumer, ta dah - trade-mark! But this does
not stand true if the color is functional - this green army fatigues.
In that instance, the color is functional because it acts as
camoflague. But red on the bottom sole of a shoe and blue on a
jewellery box? There's no rationale or functional reason.
If this decision stands, it could have wide-reaching implications beyond Christian Louboutin. If a single color cannot function as a trade-mark, could Tiffany's blue box trade-mark also be in jeopardy? It's not something that Tiffany is interested in finding out. As such, in a survival of the fittest move, Tiffany has thrown its well-jewelled hat into the ring by submitting an amicus curiae brief to the court. This allows Tiffany, who is not a party in the legal dispute, to put in its two cents for the judge's consideration. This
ensures that the Court of Appeal will consider the far-reaching
implications that upholding the decision will have on non-related
View more from Canada Fashion Law and @BrandFashionLaw
(C) Ashlee Froese, 2011. All rights reserved.
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constitute legal advice. It is strongly recommended that you seek a
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