This morning, the Second Circuit Court of Appeal issued its long awaited decision and it contains something for everyone.
To summarize, the Court narrowed Louboutin's "Red Sole" trademark to:
"only those situations where the red lacquered outsole contrasts in color with the adjourning 'upper' of the shoe."
Once the Court reached this conclusion, it necessarily follows that YSL's monochromatic shoe does not infringe on the red sole mark and thus, the District Court properly denied Louboutin's request for a Preliminary Injunction. Once the Court limited the mark and found in YSL's favor on infringement, the Court did not need to discuss the highly debated affirmative defense of aesthetic functionality.
Louboutin is very lucky that it gets to keep some of its trademark and should say a prayer of thanks to the Court of Appeal (remember, the District Court was ready to cancel the Red Sole Mark in its entirety).
I also have to wonder why Louboutin chose YSL as its test case. Especially when the YSL shoes Louboutin claim are causing customer confusion look nothing like his and have been used by YSL long before Louboutin used his red soles.
Again, poor lawyering or maybe the result of two long time French competitors taking a grudge match to the US Courts. Someone should have warned Louboutin about the American legal system.
While this morning's blog posts tout this decision as a victory for Louboutin, I am not so sure. Yes, it is nice that the Court found that the Red Sole Mark, as modified, had secondary meaning, but no one really doubted that. To me, in determine a win, I ask:
Are you in a better position today than before filing the suit?
Here, the answer to that question is clearly "NO." Louboutin's trademark is narrowed (not far enough in my opinion - I would have included the pantone number for the red).
YSL, and anyone else out there for that matter, can sell all the monochromatic shoes they want.
So despite claims of victory, if I were Louboutin, I would still be seeing red.
ps -- check out footnote 19 where the Court explains that "the more appropriate vehicle for the protection of the Red Sole Mark would have been copyright and not trademark." Does this set the stage for future IDPPPA battles or what? Imagine the drama!! This footnote also gives insight on the Court's view of functionality. So, Fashion Law fans stay tuned! (and remember that the juiciest bits are always in the footnotes!)