Wednesday, August 17, 2011

Christian Louboutin Red Soles Trademark Lawsuit - Crazy Order on Preliminary Injunction

All right.  I've been dying to read the Order from Judge Marrero in the Christian Louboutin v Yves Saint Laurent "red soles" lawsuit.  Here it is in it's entirety from Scribd, if you are so inclined.  (It's actually very interesting.)

Louboutin filed a motion for a preliminary injunction, which would prevent Yves Saint Laurent from selling any shoes with red soles until the case is finished.  As part of this, they had to prove "likelihood of success on the merits," which in layman's speech means "do you have a shot at winning this thing?"  The Judge essentially feels that red soles are ornamental and aesthetic, and thus not protectable by trademark, and that Louboutin will not be able to prove success on the merits of the claim.  Essentially, he fully decided the case at a very early point in the process. 

Of course the Judge is a dude.  He's probably never even heard of Christian Louboutin.

Single colors can be trademarked, but it is kind of rare.  One of the most famous color trademarks is pink insulation for Owens-Corning.  However, the Judge is very disinclined to offer trademark protection on a color for anything fashion related.  He uses a somewhat bizarre analogy to Monet using a certain color of indigo in a painting for water, and then attempting to prevent Picasso from using it for water.  He points out that attorneys will quibble with his analogy.  Yes, that's right.  But then he goes on full steam ahead to compare a painting to the color of soles on a shoe.  The biggest issue I have with the analogy is that the Judge focuses on the color red, as opposed to the color red on soles of shoes, which is what the trademark is about.  Louboutin isn't trying to prevent other designers from using the color red on the tops of shoes or on anything else.  He is trying to prevent them from using red on the bottoms of shoes.  There is no shortage of other colors that designers can use on the bottoms of shoes, other than red.  No one cared about red soles until Louboutin came along and established a name for himself by doing it.

But here's the real kicker for me.  The Judge quotes Qualitex Co. v. Jacobson Products Co., a Supreme Court case which is the big "is a color trademark functional" case, and describes a functional trademark as follows:
This Court consequently has explained that, "[i]n general terms, a product feature is functional," and cannot serve as a trademark, "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article," that is, if exclusive use of the feature would put competitors at a significant non reputation related disadvantage. 
He then goes on to talk about all the contexts where a single color has been held functional because aesthetic appeal can be functional, in completely unrelated contexts.  Like, green for farm equipment.  His conclusion is that because the red soles exemplify sexiness, standing out, and other things like that, those are nontrademark functions.  (I would argue that all of that is only true because Louboutin made it true.)  He also concludes that the red soles are more expensive to make, thus highly desirable to such high end brands like Louboutin and Yves St. Laurent, and thus serve as more than a source identifier.  (I would argue that red, pink, blue, purple, green, beige, yellow, orange, and any other color you can think of would be equally expensive to make and Yves St Laurent is free to use any of those colors on their soles.)  In short, red soles have non trademark functions.

He then leaps to the conclusion that Louboutin's use of red soles puts everyone else at a significant competitive disadvantage.  Really?  No one ever cared about using red soles on a regular basis until he came along.  As I discussed above, there are hundreds of other colors they could use.  Why red?  Could it be because everyone associates red with Louboutin now?  There is no other logical reason why they would want to use red other than to ride on Louboutin's coattails.  Much of the reasoning here by the Judge is also muddied in that it seems focused not on the soles of the shoes (which no one can see unless you are walking), but on the tops of the shoes or the entire shoe itself, and the inability of designers to match their fashions (including hats and gloves!) to the shoes.  (Do people match their clothes to the soles of their shoes?  Um...)  Basically he decides that every designer should have the ability to design a completely monochromatic shoe, including soles, in red, or they will be placed at a "significant disadvantage."  He misses the point entirely.  Louboutin is not preventing anyone from designing a red shoe.  Just red soles. 

(In case you can't tell, I hate this opinion.)

Grudgingly, I will admit that the Judge makes a good point in that Louboutin does not sufficiently describe what color red he is claiming as the trademark for the soles in the trademark registration.  This will undoubtedly come back to bite them in the ass.  There are a million shades of red out there, right?  Registered trademarks are there to offer notice to others about what you can and can't do.  Without sufficient description....hosed.  Someone's IP attorneys fell asleep at the wheel, is all I have to say.  You would think with the importance of the red soles they would have this covered up, down, backwards, and forwards until Sunday.  There is some additional discussion on the parade of terribles that might occur if Louboutin is able to trademark red soles, but eh.

The Judge, in the end concludes that the trademark is not protectable, so he never gets to the issue of "is there likelihood of confusion" which is the next issue for trademarks.  (I give that a resounding yes.)  He then - astonishingly to me at this stage of the case -- tells Yves St. Laurent that if they file summary judgment on this issue of whether it is a protectable trademark (which would completely decide the case) he will grant their motion and find that Louboutin's red soles are not valid trademarks.  He then tells Louboutin that they will be able to appeal that decision immediately.  (Usually you have to wait until final judgment on all claims to appeal.)  Expect a summary judgment motion from Yves St Laurent very soon.  And then expect an appeal to the 2nd Circuit from Louboutin.  And then, in my opinion, expect a reversal from the 2nd Circuit. 

The Judge did not address secondary meaning (I admit I kind of skimmed the opinion), and I personally think that Christian Louboutin will and should carry the day on secondary meaning for the red soles.  Secondary meaning basically means that "hey, your mark may not be something that is usually protectable, but you've been doing it for awhile and everyone associates it with you, so we'll give it to you anyway."  I mean, have you ever seen a red sole on a shoe and not thought Christian Louboutin?  My mom knows nothing about Christian Louboutin shoes, but even she knows that Oprah always wears "those fancy shoes with the red soles."  The red soles completely identify source, which is the whole point of trademark law.  There is also a "famous mark" doctrine they can rely on, although it is a bit harder to show that a mark is famous.  McDonald's is famous.  Is Christian Louboutin's red soles?  Maybe, depending on what market of people they have to look at to establish that it's famous.   

I'm beginning to think I need to read the briefs that were submitted on this because I have to say, this decision is utterly baffling to me, and I can't understand how Louboutin lost it in such a big way.  Granted, there are Judges who aren't great and decide against you even on a great argument, and preliminary injunctions can be difficult to get, but the fact that the Judge basically decided the case on the merits and said that in his order at this stage of the case is astonishing to me.  I mean, he told Yves St. Laurent to go ahead and file their summary judgment, and then told Louboutin they'd be able to appeal it immediately.  That's really....interesting.         

And wow, if this trademark goes down every Payless shoe store in the country is going to have hoards of high heels with red soles.  I shudder to think about it. 

1 comment:

  1. I'm really glad you broke this down because ever since you first mentioned it, I've been interested in this case, but I don't think I'd have bothered trying to read it myself. It does seem baffling that the judge totally skipped over the idea of the red sole being the trademark, not the color red itself. In my head, I imagine this judge as one of those "Oh women and their shoes" kind of men.