The Bloomberg BNA Intellectual Property Blog is the home of the "Do You Copy?" podcast and offers links to selected articles by the BNA IP team, which is accessible to both subscribers and non-subscribers as well as commentary and analysis exclusive to this blog.
Tuesday, September 18, 2012
by Tamlin H. Bason
When I spoke with Christian Louboutin’s attorney a few days after the Second Circuit determined that his client’s trademark for red-soled shoes was both valid enforceable, he was understandably relieved, and hinted that a district court’s earlier ruling in fact had thrust the footwear design company into the midst of an existential crisis.
“I think the [Second Circuit's] decision is about as important as it gets,” Harley I. Lewin of McCarter & English, New York, said. “I don't know how you can get more important than fighting for the lifeblood of your company and winning.”
Certainly it was a big victory for Louboutin. The Second Circuit in no uncertain terms rejected a per se rule against single colors serving as trademarks in the fashion industry—a rule that had been recognized by the U.S. District Court for the Southern District of New York when in August 2011 it refused to issue a preliminary injunction against Yves Saint Laurent’s sale of entirely red shoes.
In fashion, color serves an inherently functional purpose, and therefore one company can never get a monopoly on a single color, the court reasoned. Accordingly, it said that it he would likely grant YSL’s counterclaim that sought a cancellation of Louboutin’s registration—thus prompting Louboutin’s hurried appeal.
So, I don’t want to take anything away from Lewin and Louboutin—the briefs were good, and while I wasn’t at the oral arguments, Lewin (mostly) convinced three appellate judges of his cause, so he must have been persuasive. But I have to wonder: Why was the company in such a bind to begin with? The saying goes: People who live in glass houses shouldn’t throw stones. Louboutin didn’t just throw a stone; it started an avalanche.
By filing a lawsuit against a very well-known—and well-financed—competitor, Louboutin sought to make a point. That point being that only it was allowed to make women’s fashion shoes with red soles. Of course that point was lost entirely after the court's decision, when, as Lewin told me, “What began as a question of enforcement of a registered trademark … became a question of [whether the trademark was valid] because of what Marrero did.”
The Second Circuit answered both questions in the affirmative, finding that Louboutin’s mark was valid and that it had attained considerable secondary meaning. However, the court also amended the registration so that the mark now only applies to red-soled shoes that have contrasting “upper” colors. As a result, the appeals court said that YSL’s entirely red shoe was not infringing. Louboutin thus won its trademark, but lost its case.
Numerous people have pointed to the Second Circuit’s decision as evidence that Louboutin should never have brought its lawsuit in the first place. Indeed, YSL’s attorney, David H. Bernstein of Debevoise & Plimpton, told me “I think Christian Louboutin is in a substantially worse position than when they brought the lawsuit.”
While I agree that the company’s position with respect to its registration is weaker now than it was before the lawsuit, I am not certain that bringing the lawsuit in the first place was a mistake.
Though Louboutin began selling its iconic red-soled shoes decades ago, it didn’t register the red sole as a trademark until 2008. Unlike patents and copyrights, a trademark will not be enforced if it is deemed abandoned.
A trademark owner also must diligently enforce its mark, lest it be foreclosed from doing so at a later date on estoppel grounds. Moreover, the fashion industry itself has virtually no protection for intellectual property—though a bill was introduced last week in the Senate, and a similar bill awaits action in the House, that aim to change that.
In any event, Louboutin had a registered trademark, so clearly some folks at the Patent and Trademark Office thought that its mark was valid and deserving of protection. With this in mind, Louboutin’s decision to bring the lawsuit makes more sense and I don’t blame it for flexing its muscles in order to ascertain how much protection it was entitled to.
Of course, if the mark is ultimately cancelled on remand then that would certainly change things.
Tamlin's full writeup on this decision is here. Tony and Ananda also discuss this decision in Episode 37 of the "Do You Copy?" Podcast.
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